Ex Parte Byers et alDownload PDFPatent Trial and Appeal BoardDec 28, 201613578272 (P.T.A.B. Dec. 28, 2016) 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. 13/578,272 08/10/2012 Robert Love Byers TH3759 US 9543 23632 7590 12/30/2016 SHF! T OH miUPANY EXAMINER P O BOX 2463 CHU, KATHERINE J HOUSTON, TX 77252-2463 ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 12/30/2016 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): USPatents@Shell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT LOVE BYERS, SCOTT WINFIELD DAVIS, JASON HUNTER GAGE, JOHN JOSEPH KENNEY, WILLIAM MICHAEL PRITCHETT, and BRUCE CLINTON VOLKERT Appeal 2015-001252 Application 13/578,272 Technology Center 3600 Before MICHAEL L. HOELTER, LISA M. GUIJT, and GORDON D. KINDER, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants1 appeal under 35 U.S.C. § 134 from a rejection of claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b). We affirm and enter a NE W GROUND OF RE JECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Appellants state that the real party in interest is Shell Oil Co. Appeal Br. 2. Appeal 2015-001252 Application 13/578,272 CLAIMED SUBJECT MATTER The claims are directed to systems and methods for installing and/or retrieving subsea components without the use of a drilling rig. Spec. 1. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A method comprising: providing a first vessel floating on a surface of a body of water; connecting a first line from the first vessel to a subsea structure; lifting the subsea structure within the body of water with the first line; connecting a second line from a second vessel to the subsea structure; disconnecting the first line from the subsea structure; and lifting subsea structure to the second vessel with the second line. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Guinn US 6,752,100 B2 June 22,2004 Colyer US 6,796,261 B2 Sept. 28,2004 REJECTIONS The Examiner made the following rejection: Claims 1—10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Guinn and Colyer. Final Act. 2—3; Ans. 2. OPINION Claims 1 and 10 are independent. Appellants argue claims 1—9 as a group. Appeal Br. 4—7. We select claim 1 as representative, and claims 2—9 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). 2 Appeal 2015-001252 Application 13/578,272 The Examiner finds that Guinn teaches all the steps of claim 1, though not in sequence. Final Act. 2; Ans. 2. Colyer is relied on only for teaching that lifting an object from the ocean floor can proceed in the reverse sequence as lowering it down. Final Act. 2 (citing Colyer 4:15—16). The Examiner reasons that [wjhile Guinn fails to specifically disclose lifting the subsea structure within the body of water with the first line and lifting the subsea structure to the second vessel with the second line, Colyer teaches a method of subsea deployment for laying lines, and discloses that “The same procedure may be used in reverse to retrieve previously installed lines.” (Colyer’s column 4, lines 15 — 16). It would be obvious to reverse Guinn’s installation method to be able to retrieve the subsea equipment, since Colyer teaches that it is known in the subsea deployment art that retrieving can be the reverse of installing; such a reversal would result in the claimed method. Final Act. 2. Guinn discloses a method for placing equipment on the ocean floor and moving it about as required. Guinn, Abstract and 1:7—12. So far as relevant, the sequence of steps taught by Guinn is illustrated in Figures 1—6. First, a parking pile 10 is launched from the deck of convenience vessel 20 and lowered using a winch attached to cable 50. Id. at 3:63—4:11; Figs. 1 and 2. A remotely operated vehicle (ROV) is used to disconnect pile 10 from cable 50. Id. at 4:35 — 41; Fig. 3. Next, a structure such as tree 80 “is lowered into the water with the aid of a boom crane 90.” Id. at 65—66. Figure 4 shows tree 80 that has been lowered into the water by a crane connected to line 100. Id. at 4:65—68. The crane may be on the same vessel 20 or on another vessel. Id. Buoys 110 are also in the water and also connected to the load by rope/chain 120/130. Id. at 5:3—6. Once the 3 Appeal 2015-001252 Application 13/578,272 structure and buoys are submerged, line 100 is disconnected from tree 80 (which is now only secured via rope/chain 120/130). Id. at 6:60-63; Fig 5. The rise or descent of the structure/buoy combination is controlled by how much of the weight of chain 130, and clump weights mounted thereto, is carried by the buoys. Id. at 7:1—19; Fig. 6. This buoyancy load, in turn, is controlled by the location of the clump weights and the chain relative to the lowermost apex of chain 130. Figure 5 shows more weight of the chain/clump weights on the vessel allowing the buoys to lift the structure; Figure 6 shows more weight of the chain/clump weights on the buoys, lowering the structure. As noted above, Guinn also makes plain that crane 90 connected to line 100 may be on the same vessel 20 or a different one. Id. at 4:65—68. Once a number of piles have been installed, tree 80 may be lifted from a pile and lowered onto a well head. Id. at 7:46—8:33; Figs. 7—9. In Guinn, line 100 is the line that initially lowers the tree 80 into the water and so is able to lift the structure. (“Once submerged, the load is transferred from the overboarding line 100 to the pendent line 120 and the buoys 110.” Id. at 6:60-62.) In addition, if tracing the same steps backward, line 100 would be the line to make the final lift to the vessel. After tree 80 and buoys 110 are in the water, rope/chain 120/130 controls further descent (together with buoys 110 as described above.) Id. at 5:3— 6:37. Thus, if lifting a tree from the ocean floor, rope/chain 120/130 would control the initial stages if not the majority of the ascent. Accordingly, as the Examiner correctly found, line 100 corresponds to the claimed “second line,” and some or all of the line 120/130 corresponds to the claimed first line. Final Act. 2 (see 13). Appellants argue: 4 Appeal 2015-001252 Application 13/578,272 [T]he Final Office Action failed to provide any articulated reasoning with rational underpinning [to] explain why “one of ordinary skill in the art would remove the buoys in order to lift the subsea equipment to the second vessel.” Appeal Br. 4—5. Appellants provide no citation for this alleged quotation, and we cannot find the quoted phrase anywhere in the Final Action. In as much as no steps in claim 1 require removing buoys (or attaching them, for that matter) we do not consider Appellants’ argument concerning buoy detachment further. Next, Appellants argue that the Examiner “failed to provide any motivation to modify Guinn to lift the subsea equipment to the second vessel with the second line.” Appeal Br. 5. We are not persuaded by this argument because Guinn specifically states, “the [structure] 80 is lowered into the water with the aid of a boom crane 90. The broom crane 90 may be located on the deck of the vessel 20 or on another vessel of convenience.” Id. at 4:65—67. As discussed above Guinn explicitly suggests the procedure for lowering a structure using two lines in sequence, and Colyer teaches retracing steps to reverse the procedure. We agree with the Examiner that one of ordinary skill in the art would find it obvious in light of Colyer to lift a structure to a vessel by reversing the steps of Guinn. Final Act. 2. Appellants’ next argument (Appeal Br. 5, 1st full para.) again misrepresents the Final Office Action. Appellants state “the Final Office Action failed to explain how simply ‘removing] the buoys’ would result in lifting the subsea structure to the second vessel with the second line.” Appeal Br. 5. No citation to the record was provided for this alleged quotation from the Final Office Action, and indeed it was not found there. Instead, the Advisory Action mailed January 24, 2014 explained that it 5 Appeal 2015-001252 Application 13/578,272 would have been obvious “to remove the buoys before lifting the subsea structure with the second line of the second vessel onto the second vessel.” Id. Because Appellants are arguing about a statement the Examiner did not make, we will not address the argument further. We also note that claim 1 requires lifting a structure to a vessel, while Appellants’ argument appears to be addressed to lifting a structure onto a vessel, and so is not commensurate with the claim limitations at issue. Performing the steps disclosed by Guinn in reverse order would precisely result in the second line, fed from the crane on the optional second vessel lifting the structure to the second craft after the structure was disconnected from the first line and its associated buoys. Appellants’ allegation that “the Examiner has still failed to demonstrate why it would be obvious to modify the method of Guinn to “lift[] [a] subsea structure to [a] second vessel with [a] second line. ” (Appeal Br. 6) is not persuasive. No modification of Guinn is necessary. Both cable 100 and the combination 120/130 of Guinn are capable of lifting the structure, and a second vessel is specifically described by Guinn, including its crane for offloading structures to the ocean. Appellants argue claim 10 is not properly rejected over the Guinn/ Colyer combination. Claim 10 is similar to claim 1 except that it “lower[s]” the subsea structure instead of lifting it, and instead of lifting the structure to a second vessel, claim 10 requires “moving the second vessel, the second line and the subsea structure to a desired installation location; and installing the subsea structure at the desired location within the body of water.” Appeal Br. 10 (Claims App.). 6 Appeal 2015-001252 Application 13/578,272 All the steps of claim 10 are disclosed by Guinn. As discussed above, Guinn establishes a subsea parking lot, with pilings that support various pieces of equipment until they are needed. Guinn specifically suggests using a different vessel to lower a structure than was used to transport it to a desired location on the ocean surface (Guinn 4:65—5:3) and moving equipment from a parked location to a work site. Id. at 7:46—8:33. Moving the equipment involves both lifting it and lowering it. Id. Specifically, Guinn discloses providing a first vessel 20 on the water surface, (Fig. 1); connecting a first line 120 (Fig. 4) to a structure 80; lowering the structure (Figs. 5 and 6); connecting a second line 170 to the structure (Fig 7; disconnecting the first line (Fig. 6); moving a second vessel (optional second vessel; compare Figs 6—8) and installing the structure (Fig. 9.). Guinn does not explicitly suggest using a second vessel with a second line to move the parked structure from one location to another, but Guinn does suggest using plural vessels, and describes moving the structure between desired locations. We agree with the Examiner that it would have been obvious to select a second vessel. See Ans. 4. In view of the foregoing, we find that the subject matter of claim 10 would have been obvious at the time of the invention to one of ordinary skill in the art in view of Guinn and so affirm the rejection of claim 10. Because our view of Guinn as applied to claim 10 may be considered to differ from that expressed by the Examiner, and in order that Appellants may have an opportunity to respond, we designate the rejection of claim 10 as a New Ground of Rejection. 7 Appeal 2015-001252 Application 13/578,272 DECISION For the above reasons, the Examiner’s rejection of claims 1—10 is Affirmed. We enter NEW GROUND OF REJECTION of claim 10 under 35 U.S.C. § 103(a) as obvious in view of Guinn. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground 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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new 8 Appeal 2015-001252 Application 13/578,272 ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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))l)(iv). AFFIRMED; 37 C.F.R, $ 41.50(b) 9 Copy with citationCopy as parenthetical citation