Ex Parte Goulet

Patent Trial and Appeal Board

Jun 28, 2016

12845839 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/845,839 07/29/2010
30743 7590 06/28/2016
WHITHAM, CURTIS & COOK, P,C
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
FIRST NAMED INVENTOR
Mary Elizabeth Goulet
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
07220013aa 1758
EXAMINER
TOLEDO-DURAN, EDWIN J
ART UNIT PAPER NUMBER
3678
MAILDATE DELIVERY MODE
06/28/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MARY ELIZABETH GOULET
Appeal2014-004399
Application 12/845,839
Technology Center 3600
Before NEALE. ABRAMS, BEYERL Y M. BUNTING, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
13, 22, 24, and 28. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2014-004399
Application 12/845,839
CLAIMED SUBJECT MATTER
The claims are directed to deepwater, oil containment methods and
structures, underwater oil containment bubbles, domes, tents, bags and other
flexible structures. Claim 13, reproduced below, is illustrative of the
claimed subject matter:
13. A method of containing an underwater high-pressure oil
discharge in deepwater, wherein deepwater is exemplified by
water depth where BP's disaster occurred in April 2010,
compnsmg:
from a starting point above the underwater high-pressure
oil discharge, lowering a containment structure that comprises an
oil impermeable, water-permeable material, a set of ports
through which oily product exits, and at least one hollow section;
adding weighting pellets into the at least one hollow
section and thereby dispatching the containment structure
progressively downwards to deepwater;
disposing the containment structure to enclosure [sic] the
underwater high-pressure oil discharge in deepwater;
containing oil in deepwater, wherein the containing is
performed by the containment structure;
evacuating oily water or oily product via the set of ports in
the containment structure.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Boyce
O'Rourke
Lazes
US 4,047,390 Sept. 13, 1977
US 4,405,258 Sept. 20, 1983
US 2005/0025574 Al Feb. 3, 2005
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Application 12/845,839
REJECTIONS
The Examiner made the following rejections:
Claims 13, 22, 24, and 28 stand rejected under 35 U.S.C § 112,
second paragraph, as being indefinite.
Claims 13, 24, and 28 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over 0 'Rourke and Lazes.
Claim 22 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over 0 'Rourke, Lazes, and Boyce.
OPINION
Rejection under 35 U.S.C. § 112, second paragraph
The Examiner determines that the phrase "wherein deepwater is
exemplified by water depth where BP's disaster occurred in April 201 O" is
indefinite because 1) it uses the abbreviation BP (in place of the formal
name of BP PLC, a British Corporation); 2) it is vague and indefinite; and 3)
it is vague because it is not clear whether the limitations following
"exemplified" are part of the claimed invention. Final Act. 7-8. The vague
phrase appears in claims 13, 24, and 28, and by incorporation in dependent
claim 22.
We agree with the Examiner that the phrase renders the scope of the
claims indefinite. As the Examiner explains, it is unclear whether the term
"exemplified" in the claim limitation only covers wells at exactly 5023 feet
below sea level (where BP's disaster occurred in April, 2010), at wells
between 4900 feet and 5100 feet below sea level, or at wells between 4500
feet and 5500 feet below sea level. Ans. 6-7. We take the ranges queried by
the Examiner as rhetorical, not as specific proposed limitations. Appellant
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Application 12/845,839
argues that the term "deepwater" is well understood in the art. Appeal Br.
10-12, Reply Br. 1-2. Whether true or not, this argument does not
overcome the Examiner's finding. The very presence in the claims of the
challenged phrase renders the Appellant's argument unpersuasive. There
would be no reason to include an example if the term were clear. We have
not been apprised of error and therefore sustain the rejection of claims 13,
22, 24, and 28 under 35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 103(a)
Appellant argues all the claims as a group. Appeal Br. 13-23. Claims
13, 24, and 28 are independent, and claim 22 depends directly from claim
13. We select claim 13 as the representative claim, and claims 22, 24, and
28 will stand or fall with claim 13. 37 C.F.R. § 41.37(c)(l)(iv). Claim 13 is
rejected over O'Rourke and Lazes. Final Act. 9-10.
The Examiner finds that 0 'Rourke discloses a method of containing
an underwater, high-pressure oil discharge comprising:
a. From a starting point above the underwater high-pressure oil
discharge (Fig. 4, #30 and Col. 1, 11. 11-15, "Blowout''), lowering a
containment structure that comprises an oil impermeable material (Fig. 1,
#11 and Col. 4, 11. 43--48), a set of ports (Fig. 4) through which oily product
exits, and at least one hollow section (Fig. 1, #12);
b. Adding weighting pellets (Col. 4, 11. 48--49) into the at least one
hollow section and thereby dispatching the containment structure
progressively downwards (Fig. 3 and Col. 5, 11. 5-26);
c. Disposing the containment structure to enclosure the underwater
high-pressure oil discharge (Col. 5, 11. 25-26);
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Appeal2014-004399
Application 12/845,839
d. Containing oil, wherein the containing is performed by the
containment structure (Fig. 4); and
e. Evacuating oily water or oily product via the set of ports (Fig. 4) in
the containment structure (Fig. 4). Final Act. 9.
The Examiner acknowledges that O'Rourke is silent about a water-
permeable material, and cites Lazes for such a material used in a similar
application. Specifically, the Examiner finds Lazes discloses an oil
containment device (Fig. 1, #2) made of an oil-impermeable, water-
permeable material (i-f 31) that is capable of working on depths of 5,000 feet
or greater (i-f 34, 11. 4---6; i124) which therefore would be capable of working
in water depths where the BP's disaster occurred in April 2010. Final Act.
10. The Examiner finds that O'Rourke and Lazes are analogous art because
they are in the same field of endeavor, and that at the time of the invention it
would have been obvious to a person of ordinary skill in the art to make the
containment structure of an oil impermeable, water permeable material with
enough strength to work on depths of 5000 feet or greater (i.e. deepwater) as
Lazes discloses and to eliminate element 35 (ports) of O'Rourke. Id. The
Examiner finds that the motivation to make these changes would have been
to release filtered and substantially cleaner water to the sea or ocean for
environmental issues and because it has been held within the general skill of
a worker in the art to select a known material on the basis of its suitability
for the intended use is a matter of obvious design choice. Id.
Appellant does not dispute what the Examiner finds each reference
discloses. Appeal Br. 13-23. Instead, Appellant points out that O'Rourke
discloses a device intended for use in shallow water and Lazes discloses a
fabric container for use in deep water. Appeal Br. 13, 17. Appellant
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Application 12/845,839
proposes that these applications are so different that one of ordinary skill
would not look to shallow water devices for use in deep water, even as
modified. Id. 17-18. As proof, Appellant points to what happened during
the Deepwater Horizon disaster. Appellant argues that because BP did not
tum to the combination the Examiner found obvious, the Examiner must be
wrong. Appeal Br. 13-23.
The Examiner addressed each of the Appellant's arguments at length
in the Answer. Ans. 7-14; see also Final Act. 2-8. We adopt those findings
as our own.
Additionally, Appellant argues that one of ordinary skill in the art
would not intermix the teachings of Lazes into 0 'Rourke in the manner
hypothesized in the Final Action. Appeal Br. 13. Appellant, however, does
not expressly explain why one would not intermix O'Rourke and Lazes,
beyond pointing out what each reference does not teach, id., and does not
point to specific evidence that the differences between "containing oil
seepage" (Lazes) and "handling and oil blowout" (O'Rourke) are such that
one of ordinary skill in the art would have not combined them. We agree
with the Examiner that
[ t ]he fact that BP did not use an underwater oil containment
dome similar to O'Rourke or Lazes has no bearing on whether
the claimed [sic] language is obvious in view of O'Rourke and
Lazes. The fact that BP did not recognize an advantage which
would flow naturally from following the suggestion of the prior
art cannot be the basis for patentability when the differences
would otherwise be obvious.
Ans. 13.
Appellant's Reply Brief likewise fails to address the substance of the
rejection, which is based on the combination of O'Rourke and Lazes.
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Appellant argues the references separately. Reply Br. 2-7. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Accordingly, we are
not apprised of error in the Examiner's proposed modification of the blow-
out cover dome of 0-Rourke using the fabric ("tightly woven scrim ...
permeable by water but not by the leaking fluid" (Lazes i-f 31)) of Lazes, and
we affirm the rejection of claim 13, and with it claims 22, 24, and 33.
Appellant's Reply Brief also argues that the Examiner's Answer did
not address the many alleged facts Appellant put in the record. Reply 2-7
citing Evidence App. 1-129. These facts simply do not address the central
issue of whether the Examiner has established a prima facie case of
obviousness. Appellant's arguments are not persuasive because Appellant's
remarks do not point to any specific language within the claims to
distinguish over the prior art. Instead, Appellant's remarks amount to a
general allegation that the claims define a patentable invention. Such
allegations will not be considered an argument for separate patentability. 37
C.F.R. § 1.37(c)(l)(iv).
DECISION
For the above reasons, the Examiner's rejection of claims 13, 22, 24,
and 28 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009).
AFFIRMED
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