Ex Parte Goulet

Patent Trial and Appeal Board

Sep 26, 2016

13050292 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/050,292 03/17/2011
30743 7590 09/26/2016
WHITHAM, CURTIS & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
FIRST NAMED INVENTOR
Mary E. 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.
07220013PA 2373
EXAMINER
TOLEDO-DURAN, EDWIN J
ART UNIT PAPER NUMBER
3678
MAILDATE DELIVERY MODE
09/26/2016 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 MARYE. GOULET
Appeal2014-008109
Application 13/050,292
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 claim 12.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2014-008109
Application 13/050,292
CLAIMED SUBJECT MATTER
The claims are directed to a method of tenting-over a deepwater oil
discharge. Claim 12 is the only pending claim and is reproduced below:
12. A method of containing an underwater, high-pressure oil
discharge at a deepwater underwater location (x,y,z) where (x,y)
are longitude and latitude coordinates that are at-sea and "z"
represents a vertical distance which is at, or within a relatively
short distance above, a seabed, comprising:
deploying an oil containment tent that comprises (1) a set
of hollow shafts disposed height-wise, each hollow shaft of the
set having an opening through which weighting pellets are
receivable and a floor on which the weighting pellets accumulate,
and (2) an oil impermeable, water-permeable material;
tenting-over the high-pressure oil discharge at the
deepwater underwater location (x,y,z), wherein the tenting-over
step comprises positioning the oil containment tent while
keeping the oil impermeable, water-permeable material beyond
and outside of a zone near the high-pressure oil discharge in
which the oil would exert pressure on the material in a range too
high for the oil impermeable, water-permeable material;
containing, performed by the oil containment tent, a
quantity of oil that was discharged at high-pressure from the
deepwater underwater location (x,y,z) including stopping oil
molecules yards or dozens of yards away from the high-pressure
oil discharge;
attaching a plurality of oil containment bags to the oil
containment tent wherein each oil containment bag is connected
to a respective port in the oil containment tent;
receiving, into each oil containment bag of the plurality of
oil containment bags, a volume of oily water.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Boyce us 4,047,390 Sept. 13, 1977
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Application 13/050,292
O'Rourke
Renfrow
Lazes
US 4,405,258 Sep. 20, 1983
US 4,790,936 Dec. 13, 1988
US 2005/0025574 Al Feb. 3, 2005
REJECTIONS
The Examiner made the following rejections:
Claim 12 is provisionally rejected on the ground of nonstatutory
double patenting over claims 13, 22, 24 and 28 of copending Application
Serial No. 12/845,839.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over O'Rourke, Lazes, Boyce, and Renfrow.
OPINION
Nonstatutory Double Patenting
Claim 12 has been provisionally rejected under the double patenting
principle. Application Serial number 12/845,839, over which this double
patenting rejection was made, became abandoned with no claims allowed
September 8, 2016. The provisional double patenting rejection is therefore
now moot and is not considered further.
Obvious in View of 0 'Rourke, Lazes, Boyce, and Renfrow
The Examiner made extensive findings. We adopt as our own the
Examiner's findings set forth below. Specifically, the Examiner found:
0 'Rourke discloses a method of containing an
underwater, high-pressure oil discharge at an underwater
location (x,y,z) where (x,y) are longitude and latitude
coordinates that are at sea and "z" represents a vertical distance
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Application 13/050,292
which is at, or within a relatively short distance above, a
seabed, comprising:
a. Deploying an oil containment tent that comprises a
floor (Figure 4, # 16) on which the weighting pellets accumulate
(column 4, lines 48--49), and an oil impermeable material
(Figure 1, # 11 and column 4, lines 43--48);
b. Tenting-over the high-pressure oil discharge (Figure 4,
#30) at the underwater location (x,y,z), wherein the tenting-over
step comprises positioning the oil containment tent (Figure 1,
# 11) while keeping the oil impermeable material beyond and
outside of a zone near the high-pressure oil discharge in which
the oil would exert pressure on the material in a range too high
for the oil impermeable material [Figure B, Final Act. 6];
c. Containing, performed by the deployed oil
containment device (Figure 1, # 11 ), a quantity of oil that was
discharged at high-pressure from the underwater location (x,y,z)
including stopping oil molecules yards or dozens of yards away
from the high-pressure oil discharge (Figure 4, #30).
Final Act. 5--6.
The Examiner acknowledged that O'Rourke is silent about a water-
permeable material and cited Lazes for such a material used in a similar
application. Final Act. 6. Specifically, the Examiner found "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)." Id. The Examiner found that "O'Rourke and
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Application 13/050,292
Lazes are analogous art because they are from the same field of endeavor
(i.e., oil containment devices)." Id. Further the Examiner found:
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 5,000 feet or greater (i.e.,
deepwater,) as Lazes discloses, and to eliminate element #35.
The motivation would have been to release filtered and
substantially cleaner water to the sea or ocean for
environmental issues and because it has been held to be 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 as a
matter of obvious design choice.
Final Act. 6-7.
The Examiner further found:
0 'Rourke as modified ... also teaches a shaft floor that
makes contact with the sea floor. However, 0 'Rourke as
modified is silent about a set of hollow shafts, an opening in
each hollow shaft of the set of hollow shafts that receives
weighting pellets, and wherein each hollow shaft extends
height-wise along the oil containment structure.
Final Act. 7. The Examiner found that "Boyce discloses an oil containment
device (column 6, lines 9--11) with a torus (Figure 3, #2) with a plurality of
hollow shafts (Figure 3, #3) extending height-wise wherein the hollow shafts
receive a fill material through an opening in each hollow shaft." Id. The
Examiner found that 0 'Rourke, as modified, and Boyce are analogous art
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Application 13/050,292
because they are from the same field of endeavor (i.e., oil containment
devices). Id. The Examiner concluded:
Id.
At the time of the invention, it would have been obvious
to a person of ordinary skill in the art to add a plurality of
vertical hollow shafts as Boyce discloses and that the
motivation would have been to increase the weight of the
structure which would make it more stable and less likely to
move. Id. Accordingly, O'Rourke as modified teaches:
d. Deploying an oil containment tent that comprises ( 1) a
set of hollow shafts disposed height-wise, each hollow shaft of
the set having an opening through which weighting pellets are
receivable into the hollow shaft and a floor on which the
weighting pellets accumulate, and (2) an oil impermeable,
water-permeable material;
e. Tenting-over the high-pressure oil discharge at the
deepwater underwater location (x,y,z), wherein the tenting-over
step comprises positioning the oil containment tent while
keeping the oil impermeable, water-permeable material beyond
and outside of a zone near the high-pressure oil discharge in
which the oil would exert pressure on the material in a range
too high for the oil impermeable, water-permeable material;
f. Containing, performed by the deployed oil containment
tent, a quantity of oil that was discharged at high-pressure from
the deepwater underwater location (x,y,z).
The Examiner determined that 0 'Rourke, as modified,
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Application 13/050,292
is silent about a plurality of underwater oil containment
bags wherein each underwater containment bag is connected to
a port in the set of ports through which oily water exits.
Renfrow discloses underwater oil containment bags (Fig. 4,
#42) connected to a port (Fig. 4, #84) in an open-based tent
structure (Fig. 4, #82) wherein the underwater containment
bags receive oily water that exits from the port.
Final Act. 7-8. The Examiner found that "O 'Rourke, as modified, and
Renfrow are analogous art because they are from the same field of endeavor
(i.e., oil containment systems)." Final Act. 8. The Examiner concluded that
[a ]t the time of the invention, it would have been obvious to a
person of ordinary skill in the art to ( 1) have a plurality of ports
that release oil and (2) connect a plurality of underwater
containment bags to a respective port in the open-based tent
structure of 0 'Rourke as modified wherein the underwater
containment bags receive oily water that exits from the ports.
The motivation would have been (1) because a mere duplication
of the essential working parts of a device involves only routine
skill in the art and (2) to release oily water from the open-based
tent structure to avoid that it fills up to capacity. Accordingly,
O'Rourke as modified teaches:
g. Attaching a plurality of oil containment bags to the oil
containment tent wherein each oil containment bag is connected
to a respective port in the oil containment tent;
h. Receiving, into each oil containment bag of the
plurality of oil containment bags, a volume of oily water.
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Id.
Based on these findings, claim 12 was rejected. Final Act. 5-8.
Claim Construction
Appellant argues that "deepwater" is a term of art that must be
understood as being more than about 68 meters below sea level and to
include 1500 meters below sea level. Appeal Br. 9. Appellant also urges
that "high-pressure oil discharge" has the same meaning as "oil gushing
under high pressure" or "oil blow out." Id. During examination of a patent
application, pending claim terms are given "their broadest reasonable
interpretation consistent with the specification, and ... claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art." In re Am. A cad. of Sci. Tech Ctr., 3 6 7 F. 3 d
1359, 1364 (Fed. Cir. 2004). The ordinary and customary meaning of a
claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention. Phillips v. A WH
Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en bane).
Our review of the Specification reveals that these terms are not
specifically defined, nor does Appellant point to any such definitions.
Indeed, we observe that a special purpose dictionary definition of "deep well
drilling" "refers to the offshore oil and gas exploration and production
activities that take place or are about to take place at depths of more than
500 meters" and further that "[t]he depth of ultra-deep water drilling is from
1500 m and beyond." See Petropedia.com,
https://www.petropedia.com/ definition/ 5484/ deep-well-drilling (last viewed
September 22, 2016). As such, Appellant does not persuade us of error in
the Examiner's interpretation of "deepwater" as "considerable depths." Ans.
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5. Likewise, Appellant's arguments do not apprise us sufficiently of error in
the Examiner's treatment of "high-pressure oil discharge" as a blowout, as
disclosed in O'Rourke, Figure 4, item 30. Ans. 6.
Discussion
Appellant asserts that claim 12 is directed to "containing an
underwater, high-pressure oil discharge at a deepwater underwater location
... which is at, or within a relatively short distance above, a seabed" and that
none of the references discloses working on deepwater oil blowout, or use of
a water-permeable material to tent-over a deepwater oil blowout. Ans. 10.
This argument is not persuasive because the recited claim language is from
the preamble, and Appellant does not explain sufficiently why the claim
preamble, when read in the context of the entire claim, recites essential
structure or steps, or if it is "necessary to give life, meaning, and vitality" to
the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999).
Next, Appellant attacks the references separately, arguing that
0 'Rourke does not disclose a deepwater application for his apparatus. 1
Appeal Br. 10-12. Appellant discounts Lazes because it discloses a device
for capturing seepage in deepwater, not a blowout. Appeal Br. 12. The
Appellant points out that Boyce teaches a sea tent to keep debris from
drifting into a subsea work area. Id. Appellant notes that Renfrow relates
only to collecting a surface oil slick. These arguments are not persuasive
because they are not addressed to the combination set out by the Examiner.
1 We note that 0 'Rourke specifically discusses use of his device in the
Beaufort Sea. O'Rourke 1: 16--42. Appellant admits that the Beaufort Sea
includes "deepwater." Appeal Br. 11-12. Accordingly, O'Rourke suggests
use of his fabric dome in deepwater, if not in ipsissimis verb is.
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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).
Appellant also challenges the Examiner's proffered reason to combine
the references based on the efforts of others to contain a deepwater oil spill,
namely those of BP. App. Br. 12-17. We note that an obviousness
"analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ."
KSR, 550 U.S. at 418. Because Appellant's argument does not take account
of such inferences and creative steps, Appellant does not persuade us that the
Examiner's proffered rationales for combining the cited references fail in
light of BP's failure to combine the prior art in the manner proposed by the
Examiner.
In the Reply Brief, Appellant claims there is a fundamental mismatch
between 0 'Rourke, directed to oil blowouts, and Lazes, directed to oil
seepage. Reply Br. 5. This assertion is not persuasive of error because it
does not allege or explain error in the Examiner's finding that the O'Rourke
and Lazes disclosures are analogous because both relate to oil containment
devices. Ans. 4.
The remaining assertions in Appellant's Reply Brief have been
considered, but are not persuasive because they do not address sufficiently
the combination of elements the Examiner found obvious, and they do not
identify persuasively claim language that distinguishes claim 12 from the
combined prior art. Accordingly, we are not apprised of error in the
Examiner's proposed modification and use of the blow-out (high-pressure
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oil discharge) 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 in deep water (Lazes i-f 24), further modified with hollow shafts
extending height-wise to contain fill material as taught by Boyce (Fig. 3,
items 2 and 3), and using the oil containment bags of Renfrow (Figure 4,
item 82).
DECISION
For the above reasons, the Examiner's rejection of claim 12 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). See 37 C.F.R. §
1.136(a)(l )(iv).
AFFIRMED
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