Ex Parte Finn et al

Patent Trial and Appeal Board

Feb 28, 2017

13275648 (P.T.A.B. Feb. 28, 2017)

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.
13/275,648 10/18/2011 Lyle David Finn 3096-00101 1547
23505 7590
CONLEY ROSE, P.C.
Jonathan M. Harris
1001 Mckinney
Suite 1800
HOUSTON, TX 77002-6417
EXAMINER
LAMBE, PATRICK F
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
pathou @conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LYLE DAVID FINN, EDWARD E. HORTON III, and
JAMES V. MAHER
Appeal 2015-002701
Application 13/275,6481
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lyle David Finn et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—14, 16—28, and 30.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, Horton Shallow Water Development, Inc. is the
real party in interest. Appeal Br. 3 (filed Sept. 19, 2014).
2 Claims 15, 29, and 31 are canceled. Id. at 5.
Appeal 2015-002701
Application 13/275,648
SUMMARY OF DECISION
We AFFIRM-IN-PART.
INVENTION
Appellants’ invention relates to “offshore structures to facilitate
offshore oil and gas drilling and production operations.” Spec., para. 3.
Claims 1,11, and 25 are independent. Claims 1 and 11 are illustrative
of the claimed invention and read as follows:
I. An offshore structure for drilling and/or producing a
subsea well, the structure comprising:
a hull having a longitudinal axis, a first end, and a second
end opposite the first end;
an anchor coupled to the second end of the hull and
configured to secure the hull to the sea floor, wherein the
anchor has an aspect ratio less than 3:1;
wherein the hull includes a variable ballast chamber
positioned axially between the first end and the second end of
the hull and a first buoyant chamber positioned between the
variable ballast chamber and the first end of the hull;
wherein the first buoyant chamber is filled with a gas and
sealed from the surrounding environment;
a ballast control conduit in fluid communication with the
variable ballast chamber and configured to supply a gas to the
variable ballast chamber;
a topside mounted to the first end of the hull.
II. A method, comprising:
(a) transporting a hull of a buoyant tower to an
offshore installation site on a single vessel having
a deck, wherein the hull includes a first end, a
second end opposite the first end, and an anchor
coupled to the second end;
(b) ballasting the vessel;
(c) floating the hull off the vessel during or after (b);
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(d) supporting a topside of the buoyant tower on a pair
of rails mounted to the vessel;
(e) maneuvering the hull between the pair of rails;
(f) ballasting the vessel or de-ballasting the hull;
(g) lifting the topside off of the pair of rails during (f);
(h) ballasting the hull;
(i) penetrating the sea floor with the anchor; and
(j) allowing the tower to pitch about the lower end of
the hull after (i).
REJECTIONS
The following rejections are before us for review:3
I. The Examiner rejected claims 1—5, 8, and 10 under 35 U.S.C.
§ 102(b) as anticipated by Ludwig (US 3,191,388, iss. June 29,
1965).
II. The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a)
as being unpatentable over Ludwig and Bergeron (US
6,457,908 Bl, iss. Oct. 1, 2002).
III. The Examiner rejected claims 11—14, 16, 24, and 30 under 35
U.S.C. § 103(a) as being unpatentable over Ludwig and
Thomas (US 2005/0158125 Al, pub. July 21, 2005).
IV. The Examiner rejected claims 17—23 under 35 U.S.C. § 103(a)
as being unpatentable over Ludwig, Thomas, and Bergeron.
3 The rejections under 35 U.S.C. § 103(a) of claims 1—5, 8, and 10 as being
unpatentable over Ludwig and Towne (US 3,783,815, iss. Jan. 8, 1974); of
claims 6 and 7 as being unpatentable over Ludwig, Towne, and Bergeron; of
claim 13 as being unpatentable over Ludwig, Thomas, and Towne; and of
claim 9 as being unpatentable over Ludwig, Towne, and Blevins, have been
withdrawn by the Examiner. Ans. 2—3 (transmitted Oct. 24, 2014).
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V. The Examiner rejected claims 9, 25, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Ludwig and Blevins (US
6,206,614 Bl, iss. Mar. 27, 2001).
VI. The Examiner rejected claims 26 and 27 under 35 U.S.C.
§ 103(a) as being unpatentable over Ludwig, Blevins, and
Bergeron.
ANALYSIS
Rejections I and V
Claims 1—5 and 8
Appellants do not present arguments for the patentability of claims 2—
5 and 8 apart from claim 1. See Appeal Br. 17. Therefore, in accordance
with 37 C.L.R. § 41.37(c)(l)(iv), we select claim 1 as the representative
claim to decide the appeal of the rejection of these claims, with claims 2—5
and 8 standing or falling with claim 1.
The Examiner finds that Ludwig discloses that “[a]n anchor secures
the lower end of the hull (10) to the sea floor (11) and has an aspect ratio
less than 3:1.” Non-Final Act. 3 (transmitted Mar. 13, 2014) (citing Ludwig,
Fig. 4).
Appellants argue that because “Ludwig does not provide that the
drawings are to scale, and is completely silent as to dimensions and
measurements in the drawings” “measurements derived from figure 4 of
Ludwig to determine or estimate the ‘aspect ratio’ of the lower portion of
column 10 engaging the sea floor [11] are of little value and cannot be relied
upon.” Appeal Br. 16 (citing Hockerson-Halberstadt, Inc. v. Avia Group
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Inti, 222 F.3d 951, 956 (Fed. Cir. 2000); MPEP § 2125). According to
Appellants, “[i]t is unclear . . . how the drawings of Ludwig can
‘demonstrate’ a particular aspect ratio without being measured or by
comparing relative dimensions.” Id. at 17.
The Examiner responds that “the figures of Ludwig are not being
measured to show an exact aspect ratio.” Ans. 5.
Although we appreciate Appellants’ position that the drawings in
Ludwig are not designated as being drawn to scale and thus cannot be relied
upon to define precise proportions of elements as Ludwig’s disclosure is
completely silent on the issue, that does not mean, “that things patent
drawings show clearly are to be disregarded.” In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972). A drawing teaches all that it reasonably discloses and
suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d
911, 914 (CCPA 1979).
We do not find the Hockerson-Halberstadt decision to be closest on
point to the situation presented here. Hockerson-Halberstadt, which cites to
In re Wright, 569 F.2d 1124 (CCPA 1977), both stand for the proposition that
it is error to rely on that which is illustrated in the drawings as disclosing
precise proportions or particular sizes of elements so illustrated if the
Specification is completely silent as to such proportions or sizes. See also
Nystrom v. TREXCo., 424 F.3d 1136 (Fed. Cir. 2005). More specifically, the
Court in Wright cautioned that arguments based on measurements obtained
from patent drawings are regarded as having little value where the patent does
not disclose that the drawings are to scale and absent any disclosure of
quantitative values. Wright, 569 F.2d at 1127.
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Rather, we find the Mraz and Aslanian decisions to be more on point.
In the Mraz case, the Court characterized the illustrations of the prior art
reference to Wilson as, “focus[ing] on the edge rolls, showing them with
great particularity and showing the grooves thereon to have an angularity
well within the range recited in appellant’s claims.” Mraz, 435 F.2d at 1072.
Similarly, in Aslanian, the Court relied on the drawings of the prior art
reference to La Barber to show that they anticipate “a longitudinally convex
portion . . . having a height approximately corresponding to said first
convex portion.” Aslanian, 590 F.2d at 912, 915 (emphasis added). In
effect, these cases stand for the proposition that a drawing teaches to a
person of ordinary skill in the art features that are clearly shown and do not
require a determination of precise proportions or particular sizes of
elements.
Here, the claim limitation at issue is directed to “an anchor portion
ha[ving] an aspect ratio less than 3:1.” Appeal Br. 23 (Claims App.)
(emphasis added). Appellants’ Specification defines the aspect ratio of the
anchor as “the ratio of the length of an anchor . . . measured axially along
its longitudinal axis to the diameter or maximum width of the anchor . . .
measured perpendicular to its longitudinal axis.” Spec., para. 31. Simple
observation of Ludwig’s Figure 4 would clearly reveal to a person of
ordinary skill in the art that the anchor is the portion of column 10 that is
located below seafloor 11 and that it has a length “L” along its longitudinal
axis that is smaller than its diameter “ D ” perpendicular to its longitudinal
axis.
Annotated Figures 4 and 5 of Ludwig are shown below:
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Annotated Figures 4 and 5 of Ludwig show an anchor portion of a
column 10 having a length “L” and a diameter “D.”
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In other words, a person of ordinary skill in the art would readily
observe in Ludwig’s Figure 4 an anchor portion where L is less than D
(L