Ex Parte Baan et al

Board of Patent Appeals and Interferences

Aug 12, 2008

10759651 (B.P.A.I. Aug. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAAP DE BAAN, RIES UITTENBOGAARD, and
LOUIS COULOMB
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Appeal 2008-2091
Application 10/759,651
Technology Center 3600
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Decided: August 12, 2008
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Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and JOHN C.
KERINS Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jaap De Baan et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1, 2, 4, and 5. Claim 3 has been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Appeal 2008-2091
Application 10/759,651

THE INVENTION
The Appellants’ invention is drawn towards a catenary anchor leg
mooring (CALM) system 100 having a cylindrical hull portion 120 which
renders the center of gravity of the system 100 to be located below the water
line (¶ 11). To further lower the center of gravity, the system 100 includes
ballast material 155 disposed in a compartment 156 at the bottom of the
cylindrical hull portion 120 (¶ 12 and fig. 2).

Claim 1, the only independent claim, reads as follows:

1. A system for stabilizing a floating catenary anchor leg
mooring system used in the production of oil from subsea
reservoirs comprising:

a non-submersible hollow buoy assembly for
continuous floatation on the sea surface;

said non-submersible hollow floating buoy assembly
including a cylindrical hull portion having a center of
gravity which is below the sea surface;

said cylindrical hull portion further including a ballast
compartment having a portion below the sea surface;

said ballast compartment being constructed and arranged
to adjust the natural pitch and roll periods of said non-
submersible hollow buoy assembly to reduce pitch and
roll in response to wind and wave forces;

means for providing a path for oil to travel from the
subsea reservoirs to a tanker.

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Application 10/759,651

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Grundy US 4,501,525 Feb. 26, 1985
Corona US 5,431,589 Jul. 11, 1995

Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Corona.
Claims 2, 4, and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Corona in view of Grundy.
The Examiner provides reasoning in support of the rejections in the
Answer (mailed June 22, 2007). The Appellants present opposing
arguments in the Appeal Brief (filed February 6, 2007) and the Reply Brief
(filed August 20, 2007).

OPINION
The Examiner explains where the elements of claim 1 are disclosed in
Corona. The Examiner found that Corona discloses a catenary anchor leg
mooring system including a hollow buoy 16 adapted to float in a non-
submersible condition and having a cylindrical hull portion with a center of
gravity located below the water line, a ballast compartment 90 located below
the sea surface, and means 50 for providing a path for oil to travel from
underwater reservoirs (Ans. 3).
The Appellants’ main argument in the instant appeal is that Corona
does not disclose a “non-submersible” hollow buoy that is designed for
“continuous flotation” (App. Br. 8). Specifically, the Appellants argue that
because the buoy of Corona is intermittently submerged to a location
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Application 10/759,651

beneath the sea surface, it cannot be considered to be a “non-submersible”
buoy designed for “continuous flotation” (App. Br. 8).
In response, the Examiner takes the position that the limitations “non-
submersible” and “for continuous flotation” are merely “elements of
intended use” and that the buoy of Corona “can be used in a ‘non
submersible, continuously floating’ condition” (Ans. 6).
For the reasons expressed below in our new grounds of rejection, the
disclosure of the instant application does not clearly convey to one ordinarily
skilled in the art that the Appellants were in possession of a “non-
submersible” buoy at the time the application was filed. Furthermore, the
metes and bounds of the limitation “non-submersible,” as used in claim 1,
have not been sufficiently defined to permit a determination as to whether or
not the buoy of Corona is a “non-submersible” buoy.
We shall not sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 102(b) as anticipated by Corona, and the rejection of claims 2, 4,
and 5 under 35 U.S.C. § 103(a) as unpatentable over Corona in view of
Grundy. For the reasons expressed below, claim 1, and claims 2, 4, and 5
depending from claim 1, are indefinite. Therefore, the prior art rejections
must fall because they necessarily are based on speculative assumption as to
the meaning of the claim. See In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejections.

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NEW GROUNDS OF REJECTION
We make the following new grounds of rejection pursuant to 37
C.F.R. § 41.50(b).

Rejection based upon a lack of written description
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement. To
satisfy the written description requirement, the disclosure must convey with
reasonable clarity to skilled artisans that the Appellants were in possession
of the claimed invention as of the filing date. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “The invention is, for purposes of
the ‘written description’ inquiry, whatever is now claimed.” Id.
The issue before us is whether the disclosure in the application as
originally filed reasonably supports a “non-submersible” buoy, as now
required by claim 11. At the outset, we note that the Appellants have not
identified, nor can we find, disclosure in the Specification that the buoy of
the claimed invention is “non-submersible.” Furthermore, when describing
the Appellants’ invention in the Appeal Brief (under the heading “Summary
of Claimed Subject Matter”), the Appellants never describe the buoy as a
“non-submersible” buoy (App. Br. 3-5). Nonetheless, the absence of a
recited term in the Specification is not dispositive so long as the disclosure
reasonably supports the limitation. The drawings in an application can be
relied upon to show that an inventor was in possession of the claimed

1 The “non-submersible” limitation was added to claim 1 in an amendment
entered with the request for continued examination (RCE) filed July 29,
2005.
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Application 10/759,651

invention as of the filing date. See Vas-Cath, 935 F.2d at 1563-64
(“[D]rawings alone may be sufficient to provide the ‘written description of
the invention’ required by § 112, first paragraph.”) However, we do not find
that the drawings in the instant application support the limitation of a “non-
submersible” buoy. Both Figures 2 and 3 show the buoy floating but
provide no indication as to whether it is “non-submersible.” Although the
buoy may be floating in the condition shown in Figures 2 and 3, under a
different condition it may become submersible. For example, the
Appellants’ buoy floats when its weight is balanced by the buoyancy force.
However, if the weight were to increase (e.g. adding a heavier ballast
material or flooding the buoy with water) such that it would be larger than
the buoyancy force, the Appellants’ buoy would tend to submerge. At most,
Figures 2 and 3 in the instant application support the limitation of a
“floating” buoy, but not a “non-submersible” buoy.
In conclusion, we find that neither the Appellants’ Specification nor
the Drawings clearly convey to one ordinarily skilled in the art a “non-
submersible” buoy. Therefore, claim 1, and claims 2, 4, and 5 depending
from claim 1, fail to comply with the written description requirement.

Indefiniteness rejection
Claims 1, 2, 4, and 5 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the invention.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
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Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). A claim may be invalid for indefiniteness if it is "insolubly
ambiguous" and not "amenable to construction." Exxon Research & Eng'g
Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). Even if a claim
term’s definition can be reduced to words, the claim is still indefinite if a
person of ordinary skill in the art cannot translate the definition into
meaningfully precise claim scope. Halliburton Energy Services, Inc. v. M-I
LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). While patentees are allowed to
claim their inventions broadly, they must do so in a way that distinctly
identifies the boundaries of their claims. Id. at 1253.
The disclosure in the instant application does not include a definition
of the term “non-submersible.” The ordinary and customary meaning of the
term “submersible” is “capable of being submerged.” (Merriam Webster’s
Collegiate Dictionary 1172 (Tenth Ed. 1997)). Hence, a “non-submersible”
buoy is a buoy that is not capable of being submerged. However, as
discussed above, when the weight of a buoy is increased (adding a heavier
ballast material or flooding the buoy with water) such as to overcome the
buoyancy force, the “non-submersible” buoy becomes “submersible.”
Therefore, the buoy can be characterized as both “submersible” and “non-
submersible” depending on whether or not its weight overcomes the
buoyancy force.
Corona provides an excellent illustration of the ambiguity of the
terminology “non-submersible” as used by the Appellants. Corona’s buoy is
buoyant and continuously floating while operational to transfer fluids to or
from tankers, as illustrated in solid lines in Figure 1, but is capable of being
submerged to the position shown in dashed lines in Figure 1 when not in
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Application 10/759,651

use, to protect it from severe ice conditions by flooding the ballast
compartments to reduce its buoyancy and winching or paying out the chain
legs with respect to the buoy (col. 4, ll. 3-35). If “non-submersible” is
interpreted to mean incapable of being submerged under any conditions, it is
difficult to imagine any buoy, including Appellants’ satisfying this
limitation. Strictly speaking, Corona’s buoy can be submerged and thus
appears to be, and in fact is, characterized as, “submersible” (Title; col. 1, ll.
6-7) under such an interpretation. On the other hand, with the water flushed
from the ballast compartments and the windlasses properly set, Corona’s
buoy increases in buoyancy and rises to its floating position shown in solid
lines in Figure 1, where it will continuously float. If “non-submersible” is
interpreted to mean buoyant, Corona’s buoy would appear to satisfy this
limitation in this buoyant state.
In light of the above, we conclude that claim 1, which includes the
“non-submersible” limitation, and claims 2, 4, and 5 depending from claim
1, are "insolubly ambiguous" and are not "amenable to construction."

DECISION
The decision of the Examiner to reject claim 1 under 35 U.S.C.
§ 102(e) as anticipated by Corona is reversed.
The decision of the Examiner to reject claims 2, 4, and 5 under
35 U.S.C. § 103(a) as unpatentable over Corona in view of Grundy is
reversed.
We enter new grounds of rejection of claims 1, 2, 4, and 5 under 35
U.S.C. § 112, first and second paragraphs.
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

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