11234460 (B.P.A.I. Jan. 18, 2011)

Ex Parte Hayman

Board of Patent Appeals and InterferencesJan 18, 2011

11234460 (B.P.A.I. Jan. 18, 2011)

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. 11/234,460 09/23/2005 W. Z. (Zack) Hayman III HAYMAN.002C2 9413 27299 7590 01/18/2011 GAZDZINSKI & ASSOCIATES, PC 16644 WEST BERNARDO DRIVE SUITE 201 SAN DIEGO, CA 92127 EXAMINER GREENE, DANIEL LAWSON ART UNIT PAPER NUMBER 3694 MAIL DATE DELIVERY MODE 01/18/2011 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 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte W.Z. (ZACK) HAYMAN III 8 ___________ 9 10 Appeal 2009-010811 11 Application 11/234,460 12 Technology Center 3600 13 ___________ 14 15 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. 16 FETTING, Administrative Patent Judges. 17 FETTING, Administrative Patent Judge. 18 DECISION ON APPEAL1 19 20 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-010811 Application 11/234,460 2 STATEMENT OF THE CASE2 1 2 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed February 15, 2008) and the Examiner’s Answer (“Ans.,” mailed July 23, 2008), and Final Rejection (“Final Rej.,” mailed January 16, 2007). W.Z.(Zack) Hayman III (Appellant) seeks review under 35 U.S.C. § 134 2 (2002) of a final rejection of claims 13, 16-29, and 36-37, the only claims 3 pending in the application on appeal. We have jurisdiction over the appeal 4 pursuant to 35 U.S.C. § 6(b) (2002). 5 The Appellant invented a deeply submersible, and surfacable, 6 condensing containment system for a nuclear powered electricity generator. 7 Specification 1. 8 An understanding of the invention can be derived from a reading of 9 exemplary claim 13, which is reproduced below [bracketed matter and some 10 paragraphing added]. 11 13. A coastal electric power generation station with one or 12 more nuclear reactor powered generating units for operation 13 and situation offshore on the floor of a large body of water, 14 comprising: 15 [1] at least one unmanned buoyant submersible hull structure 16 comprising a containment for nuclear steam and electricity 17 generators; 18 [2] at least one mooring element removably attached to said 19 at least one unmanned buoyant submersible hull structure, said 20 Appeal 2009-010811 Application 11/234,460 3 at least one mooring element being adapted to moor said at least 1 one unmanned buoyant submersible hull structure to said floor; 2 and 3 [3] a surface facility disposed above and isolated by said 4 large body of water from said at least one buoyant submersible 5 hull structure and said at least one mooring element, said 6 surface facility controlling the operation of said one or more 7 nuclear reactor powered generating units including said at least 8 one mooring element and said at least one unmanned buoyant 9 submersible hull structure. 10 11 The Examiner relies upon the following prior art: 12 Fuller US 2,682,235 Jun. 29, 1954 Bray US 3,118,818 Jan. 21, 1964 Lowd US 3,550,385 Dec. 29, 1970 Lowd US 3,589,133 Jun. 29, 1971 Braithwaite US 4,240,613 Dec. 23, 1980 Severs US 4,302,291 Nov. 24, 1981 Fuss US 4,506,609 Mar. 26, 1985 Wich US 4,949,540 Aug. 21, 1990 Herring US 5,247,553 Sep. 21, 1993 Craig Freudenrich and Marshall Brain., How Submarines Work, http://people.howstuffworks.com/submarine.htm/printable. (last visited Jan. 8, 2007). H.S. Struttman, Submarine . The Illustrated Science and Invention Encyclopedia, pp. 2285-2289. (International Edition, 1983), (“USNNS”) 13 Claims 13, 16-29, and 36-37 stand rejected under 35 U.S.C. § 112, first 14 paragraph, as failing to comply with the written description requirement. 15 Claims 13, 16-29, and 36-37 stand rejected under 35 U.S.C. § 112, 16 second paragraph, as being indefinite for failing to particularly point out and 17 Appeal 2009-010811 Application 11/234,460 4 distinctly claim the subject matter which the Appellant regards as the 1 invention. 2 Claims 13, 16, 24-28 and 36 stand rejected under 35 U.S.C. § 102(b) as 3 being anticipated by Bray, Herring, USNNS, or Severs. 4 Claims 17-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable 5 over Severs and Lowd. 6 Claims 20-23 and 37 stand rejected under 35 U.S.C. § 103(a) as 7 unpatentable over Severs, Lowd, Lowd2, and Braithwaite, Wich, or Fuss. 8 Claims 24-29 stand rejected under 35 U.S.C. § 103(a) as unpatentable 9 over Severs, Lowd, and Fuller, Sadao, Scwartz, Yacoe, or Buckyball, and 10 Herring, Kim, Bray, or Estrada. 11 12 ISSUES 13 The issue of whether the Examiner erred in rejecting claims 13, 16-29, 14 and 36-37 under 35 U.S.C. § 112, first paragraph, as failing to comply with 15 the written description requirement turns on whether the Specification 16 provides support for at least one mooring element attached to at least one 17 hull structure such that the Appellant was in possession of the claimed 18 invention. 19 The issue of whether the Examiner erred in rejecting claims 13, 16-29, 20 and 36-37 under 35 U.S.C. § 112, second paragraph, as being indefinite for 21 failing to particularly point out and distinctly claim the subject matter which 22 the Appellant regards as the invention turns on whether a person with 23 ordinary skill in the art would have understood what is claimed when the 24 Appeal 2009-010811 Application 11/234,460 5 claims are read in light of the Specification and whether the Appellant 1 contests the Examiner’s rejections. 2 The issue of whether the Examiner erred in rejecting claims 13, 16, 24-3 28 and 36 under 35 U.S.C. § 102(b) as being anticipated by Bray, Herring, 4 USNNS, or Severs turns on whether Bray, Herring, USNNS, or Severs 5 anticipates the limitation of a surface facility that controls the power 6 generating units. 7 The issue of whether the Examiner erred in rejecting claims 17-19 under 8 35 U.S.C. § 103(a) as unpatentable over Severs and Lowd turns on whether 9 the Appellant’s arguments in support of claim 13 are found persuasive. 10 The issue of whether the Examiner erred in rejecting claims 20-23 and 11 37 under 35 U.S.C. § 103(a) as unpatentable over Severs, Lowd, Lowd2, and 12 Braithwaite, Wich, or Fuss turns on whether the Appellant’s arguments in 13 support of claims 13 and 37 are found persuasive.. 14 The issue of whether the Examiner erred in rejecting claims 24-29 under 15 35 U.S.C. § 103(a) as unpatentable over Severs, Lowd, and Fuller, Sadao, 16 Scwartz, Yacoe, or Buckyball, and Herring, Kim, Bray, or Estrada turns on 17 whether the Appellant’s arguments in support of claim 13 are found 18 persuasive.. 19 20 FACTS PERTINENT TO THE ISSUES 21 The following enumerated Findings of Fact (FF) are believed to be 22 supported by a preponderance of the evidence. 23 Facts Related to Appellant’s Disclosure 24 Appeal 2009-010811 Application 11/234,460 6 01. A seafloor power station is one or more unmanned electric 1 power generating units that are surfaced by a mooring system to 2 refuel the reactor. Abstract. 3 02. Each unit consists of a gravity mat as an anchor, with an 4 installed vertical mooring system. Specification 3. 5 03. The flexibility of the mooring system minimizes movement to 6 the hull from any seismic shaking of the anchoring mat, as the 7 parallel cables will dampen vertical, and not transmit horizontal 8 motion. Specification 9. 9 Facts Related to the Prior Art 10 Bray 11 04. Bray is directed to a submersible power unit which includes a 12 nuclear reactor that is pressure compensated for underwater 13 operation at substantial ocean depths. Bray 1:10-13. 14 Herring 15 05. Herring is directed to a portable submerged nuclear power 16 plant. Herring 1:11-12. Herring describes a submerged power 17 plant that is anchored by cables to a seabed. Herring 4:37-40. 18 The submerged power plant is towed to a refueling and 19 maintenance station by a transport ship. Herring 5:18-20. The 20 transport ship has a large forward bay and a bow that could open 21 to accept a power plant floating near or at the surface. Herring 22 5:28-31. 23 24 Appeal 2009-010811 Application 11/234,460 7 USNNS 1 06. USNNS is directed to a discussion of the evolution of 2 submarines. USNNS 2286. Modern naval nuclear submarines 3 include a control deck and an equipment deck. USNNS 2287. 4 Submarines are also equipped with torpedoes and missiles that can 5 be controlled from shore control. USNNS 2289. 6 Severs 7 07. Severs is directed to a totally submersible platform and 8 containment system for a nuclear power generating plant. Severs 9 1:7-10. Severs describes an underwater nuclear power plant 10 structure that is moored by flexible cables to an underwater 11 plateau. Severs 4:60-64. A triangular platform structure is used 12 and this structure has several pressure vessels attached. Severs 13 5:44-47 and Fig. 3. The primary pressure vessels house the 14 equipment necessary to an underwater nuclear power generating 15 plant. Severs 5:47-50. A pressure sphere on the platform is a 16 support sphere, where the support sphere houses control 17 equipment and the operation station for the power plant, personnel 18 living facilities, life support equipment, emergency storage 19 batteries, power transformers, and parts storage and repair shops. 20 Severs 12:4-9. 21 Lowd ‘385 22 08. Lowd ‘385 is directed to a buoyant structure tethered a 23 predetermined distance below the surface activity of a lard body 24 Appeal 2009-010811 Application 11/234,460 8 of water form the structural support for the wellhead processing 1 equipment of an oil well. Lowd ‘385 1:26-30. 2 Lowd ‘133 3 09. Lowd ‘133 is directed to support of selective buoyancy, 4 including platform and anchor members which can be towed to 5 their location and emplaced sequentially at a subsea location to 6 provide a base for performance of work. Lowd ‘133 1:10-15. 7 Braithwaite 8 10. Braithwaite is directed to winch mechanisms for use in the 9 recovery of non-buoyant objects such as sunken submersibles, 10 anchors, and diving bells. Braithwaite 1:6-10. 11 Wich 12 11. Wich is directed to flow equalization in multiple actuator 13 systems such as automobile lifts and the like. Wich 1:7-10. 14 Fuss 15 12. Fuss is directed to an improved seeder for agricultural use. 16 Fuss 1:6-7. 17 Fuller 18 13. Fuller is directed to a framework for enclosing space. Fuller 19 1:1-2. 20 Appeal 2009-010811 Application 11/234,460 9 1 ANALYSIS 2 Claims 13, 16-29, and 36-37 rejected under 35 U.S.C. § 112, first 3 paragraph, as failing to comply with the written description requirement 4 The Examiner found that the limitation of “at least one mooring element 5 removably attached to said at least one unmanned buoyant submersible hull 6 structure” allows for multiple submersible hull structures to be attached to 7 only one mooring element and multiple mooring elements attached to only 8 one hull structure, which is not supported by the Specification. Ans. 6-7. 9 The Appellant contends that the Abstract and Summary section 10 (Specification 3:12-22) clearly describe the invention such a person with 11 ordinary skill in the art would have understood that the Appellant was in 12 possession of the claimed invention. App. Br. 5-6. 13 We agree with the Appellant. The term “mooring element” refers any 14 structural element that is used for mooring the hull structure. As such, the 15 Specification’s description of anchor mats and parallel cables (FF 03) 16 discloses multiple mooring elements attached to a single hull structure such 17 that the Appellant was in possession of the claimed invention. The 18 Specification further describes multiple hull structures attached to a single 19 mooring system. FF 01. Although the mooring system consists of multiple 20 mooring elements, the claims only require that multiple hull structures are 21 connected to at least one mooring element. Since the mooring system 22 consists of at least one mooring element, the Specification discloses this 23 feature such that a person with ordinary skill in the art would have 24 recognized the Appellant was in possession of the claimed invention. 25 Appeal 2009-010811 Application 11/234,460 10 1 Claims 13, 16-29, and 36-37 rejected under 35 U.S.C. § 112, second 2 paragraph, as being indefinite for failing to particularly point out and 3 distinctly claim the subject matter which the Appellant regards as the 4 invention 5 The Examiner found that claims 13, 36, and 37 require controlling the 6 operation of said one or more nuclear power generating units including said 7 at least one mooring element and said at least one unmanned buoyant 8 submersible hull structure and there are multiple ways to control each 9 structure thereby rendering the claims indefinite. Ans. 7. The Appellant 10 contends that claims set out and circumscribe the claimed invention with a 11 reasonable degree of clarity and particularity. App. Br. 7-9. 12 We agree with the Appellant. The Examiner’s rejection is based on the 13 broadness of the claims (Ans. 19), where multiple configurations are 14 possible based on the claim language. However, the test for definiteness 15 under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art 16 would understand what is claimed when the claim is read in light of the 17 specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 18 1565, 1576 (Fed. Cir. 1986). Although the claims recite broad terms, a 19 person with ordinary skill in the art would have understood that the 20 Appellant is claiming at least one mooring element attached to at least one 21 hull structure. As such, the claims 13, 36, and 37 satisfy the test for 22 definiteness under 35 U.S.C. § 112, second paragraph. 23 The Examiner also found that claim 19 recites the term “parallel” that 24 the Specification provides two meanings for thereby rendering the claim 25 Appeal 2009-010811 Application 11/234,460 11 indefinite, claim 26 recites the term “appreciable” that is indefinite, claim 28 1 recites the limitation “by external means” that is indefinite, claim 36 lacks 2 antecedent basis for the terms cables or tensions, and claim 37 recites the 3 limitation “control means” that is indefinite. Ans. 3-4 and Final Rej. 4-8. 4 The Appellant does not contest these rejections. As such, we take this as 5 indication that the Appellant has waived arguments as to these rejections and 6 as such we summarily sustain the Examiner in rejecting claims 19, 26, 28, 7 and 36-37. 8 9 Claims 13, 16, 24-28 and 36 rejected under 35 U.S.C. § 102(b) as being 10 anticipated by Bray, Herring, USNNS, or Severs 11 The Appellant contends that Bray, Herring, USNNS, and Severs fail to 12 describe “said surface facility controlling the operation of said one or more 13 nuclear reactor powered generating units including said at least one mooring 14 element and said at least one unmanned buoyant submersible hull structure” 15 as required by limitation [3] of claim 13 and as recited in claim 36. App. Br. 16 11. We agree with the Appellant. Limitation [3] of claim 13 requires a 17 surface facility that is above water and away from the hull structures and 18 mooring elements. Limitation [3] further requires the surface facility 19 controls the operation of the nuclear reactor powered generating units. The 20 Examiner argues that limitation of controlling the operation of the units is a 21 functional limitation should not be afforded patentable weight because it 22 does not affect the structure of the surface station. Although the limitation 23 of controlling the operation of units is not a structural limitation in the sense 24 that it is not a physically ascertainable separate part, it is a functional 25 Appeal 2009-010811 Application 11/234,460 12 limitation that the prior art must describe a structure that is at least capable 1 of performing the controlling functions. In re Schreiber, 128 F.3 1473, 2 1477-78 (Fed. Cir. 1997). 3 Bray, Herring, USNNS, and Severs fail to describe limitation [3]. Bray 4 merely describes a submersible power unit, but fails to describe any 5 structure that is above water and away from the submersed power unit. 6 Herring also describes a submersed power plant that is resurfaced and towed 7 to a maintenance facility for refueling and maintenance. FF 05. Although 8 the maintenance facility is a surface facility, there is nothing in Herring that 9 describes that the maintenance facility is capable of controlling the operation 10 of the power generating units. USNNS only describes a nuclear naval 11 submarine. FF 06. USNNS describes a shore facility that can control the 12 torpedoes and missiles of the submarine, but fails to describe a shore facility 13 capable of controlling the power generating units of the nuclear powered 14 submarine. As such, Bray, Herring, and USNNS fail to anticipate claims 13 15 and 36. 16 Severs also describes a submersible power generating plant that houses 17 operating equipment to control the power generating units (FF 07), but fails 18 to describe a surface facility that controls the power generating units. The 19 Examiner argues that Severs describes a shore facility that controls the 20 power withdrawn from the power generating units (App. Br. 19), however, 21 we find nothing in Severs that describes a shore facility that controls the 22 amount of power withdrawn from power generating units and the Examiner 23 has failed to provide a citation to where such a description exists. Severs 24 only describes the submersible power generating plant and fails to describe 25 any other structure associated with the submersible power plants. 26 Appeal 2009-010811 Application 11/234,460 13 As such, Bray, Herring, USNNS, and Severs fail to anticipate claims 13 1 36. Dependant claims 16 and 24-28 incorporate the same subject matter and 2 therefore Bray, Herring, USNNS, and Severs fail to anticipate these claims 3 for the same reasons discussed supra. 4 5 Claims 17-19 rejected under 35 U.S.C. § 103(a) as unpatentable over 6 Severs and Lowd 7 Claims 17-19 incorporate the same limitation from independent claim 13 8 we found Severs failed to describe supra. As such, Severs and Lowd fail to 9 describe claims 17-19 for the same reasons discussed supra. 10 11 Claims 20-23 and 37 rejected under 35 U.S.C. § 103(a) as unpatentable 12 over Severs, Lowd, Lowd2, and Braithwaite, Wich, or Fuss 13 Claims 20-23 incorporate the same limitation from independent claim 13 14 we found Severs failed to describe supra. Claim 37 also recites this same 15 feature. As such, the cited prior art fails to describe claims 20-23 and 37 for 16 the same reasons discussed supra. 17 18 Claims 24-29 rejected under 35 U.S.C. § 103(a) as unpatentable over 19 Severs, Lowd, and Fuller, Sadao, Scwartz, Yacoe, or Buckyball, and 20 Herring, Kim, Bray, or Estrada 21 Claims 24-29 incorporate the same limitation from independent claim 13 22 we found Severs failed to describe supra. As such, the cited prior art fails to 23 describe claims 24-29 for the same reasons discussed supra. 24 Appeal 2009-010811 Application 11/234,460 14 1 CONCLUSIONS OF LAW 2 The Examiner erred in rejecting claims 13, 16-29, and 36-37 under 35 3 U.S.C. § 112, first paragraph, as failing to comply with the written 4 description requirement. 5 The Examiner did not err in rejecting claims 19, 26, 28, and 36-37 under 6 35 U.S.C. § 112, second paragraph, as being indefinite for failing to 7 particularly point out and distinctly claim the subject matter which the 8 Appellant regards as the invention. 9 The Examiner erred in rejecting claims 13, 16-18, 20-25, 27, and 29 10 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to 11 particularly point out and distinctly claim the subject matter which the 12 Appellant regards as the invention. 13 The Examiner erred in rejecting claims 13, 16, 24-28 and 36 under 35 14 U.S.C. § 102(b) as being anticipated by Bray, Herring, USNNS, or Severs. 15 The Examiner erred in rejecting claims 17-19 under 35 U.S.C. § 103(a) 16 as unpatentable over Severs and Lowd. 17 The Examiner erred in rejecting claims 20-23 and 37 under 35 U.S.C. 18 § 103(a) as unpatentable over Severs, Lowd, Lowd2, and Braithwaite, Wich, 19 or Fuss. 20 The Examiner erred in rejecting claims 24-29 under 35 U.S.C. § 103(a) 21 as unpatentable over Severs, Lowd, and Fuller, Sadao, Scwartz, Yacoe, or 22 Buckyball, and Herring, Kim, Bray, or Estrada. 23 24 Appeal 2009-010811 Application 11/234,460 15 DECISION 1 To summarize, our decision is as follows. 2 • The rejection of claims 13, 16-29, and 36-37 under 35 U.S.C. § 112, 3 first paragraph, as failing to comply with the written description 4 requirement is not sustained. 5 • The rejection of claims 19, 26, 28, and 36-37 under 35 U.S.C. § 112, 6 second paragraph, as being indefinite for failing to particularly point 7 out and distinctly claim the subject matter which the Appellant 8 regards as the invention is sustained. 9 • The rejection of claims 13, 16-18, 20-25, 27, and 29 under 35 U.S.C. 10 § 112, second paragraph, as being indefinite for failing to particularly 11 point out and distinctly claim the subject matter which the Appellant 12 regards as the invention is not sustained. 13 • The rejection of claims 17-19 under 35 U.S.C. § 103(a) as 14 unpatentable over Severs and Lowd is not sustained. 15 • The rejection of claims 20-23 and 37 under 35 U.S.C. § 103(a) as 16 unpatentable over Severs, Lowd, Lowd2, and Braithwaite, Wich, or 17 Fuss is not sustained. 18 • The rejection of claims 24-29 under 35 U.S.C. § 103(a) as 19 unpatentable over Severs, Lowd, and Fuller, Sadao, Scwartz, Yacoe, 20 or Buckyball, and Herring, Kim, Bray, or Estrada is not sustained. 21 22 Appeal 2009-010811 Application 11/234,460 16 No time period for taking any subsequent action in connection with 1 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2 § 1.136(a)(1)(iv) (2007). 3 4 AFFIRMED-IN-PART 5 6 7 8 mev 9 10 Address 11 GAZDZINSKI & ASSOCIATES, PC 12 16644 WEST BERNARDO DRIVE, SUITE 201 13 SAN DIEGO CA 92127 14