Ex Parte Kristensen et al

Patent Trial and Appeal Board

Feb 25, 2014

10543488 (P.T.A.B. Feb. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PER HERBERT KRISTENSEN and ERIK PETTERSEN
____________

Appeal 2012-002556
Application 10/543,488
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, GAY ANN SPAHN, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2012-002556
Application 10/543,488

2
Claimed Subject Matter
The claimed subject matter “relates to a system for dampening the
movement of a floating structure,” such as “a semi[-]submersible platform.”
Spec. 1, ll. 1-2. Claim 1, reproduced below, with emphasis added, is
illustrative of the appealed subject matter.
1. A floating structure comprising
a deck structure, mainly vertical columns supporting the
deck structure and penetrating the water plane surface, and a
pontoon structure, the floating structure being moored to the
seabed,
wherein the floating structure is moored with a taut line
anchoring system such that a heave natural period of the
floating structure corresponds to a cancellation period of the
floating structure by providing a vertical stiffness in the
anchoring system which is approximately 20% of the
waterplane stiffness for the floating structure, the waterplane
stiffness being defined by ρgA[w], wherein ρ is the density of
water, g is the acceleration of gravity and A[w] is the waterplane
area.

Independent claims 10, 11, and 17 are all directed to “[a] floating
structure” and include, inter alia, either the same or a similar recitation to
the one highlighted in claim 1 as quoted supra. App. Br., Clms. App’x.

Rejections
The following Examiner’s rejections, under 35 U.S.C. § 103(a), are
before us for review1:

1 Although Appellants list rejections of claims 1-18 under 35 U.S.C. § 112,
first and second paragraphs, as being grounds of rejection to be reviewed on
appeal (App. Br. 11), Appellants also acknowledge that an Advisory Action
Appeal 2012-002556
Application 10/543,488

3
I. claims 1-18 as unpatentable over Gottsche (US 6,273,018 B1,
issued Aug. 14, 2001), Pollack (US 6,406,222 B1, issued Jun. 18, 2002),
Byle (US 6,431,107 B1, issued Aug. 13, 2002), and Appellants’ Admitted
Prior Art (hereinafter “AAPA”)2; and
II. claims 5-10 as unpatentable over Gottsche, Pollack, Byle,
AAPA, and Wetch (US 6,666,624 B2, issued Dec. 23, 2003)3.

OPINION
Rejection I – Obviousness based on Gottsche, Pollack, Byle, and AAPA
The Examiner does not explicitly find that any of Gottsche, Pollack,
Byle, and AAPA discloses or suggests a floating structure having a heave
natural period which corresponds to a cancellation period of the floating
structure as required by independent claims 1, 10, 11, and 17. Ans. 5-6.
However, the Examiner concludes that it would have been obvious to one of
ordinary skill in the art:

mailed on Jun. 2, 2011 indicated that these rejections were overcome (App.
Br. 12). Therefore, we will not address these rejections.
2 Although the Examiner refers to paragraphs [0008], [0009], [0029], and
[0044] of the pre-grant publication (i.e., US 2006/0260526 A1, published
Nov. 23, 2006 (hereinafter “the ʼ526 publication”)) of the application
underlying this appeal as AAPA, the ʼ526 publication is not of record in the
application file. However, since page 2, lines 5-14, page 4, line 35 through
page 5, line 3, and page 6, lines 22-29 of the Specification appear to contain
the same or similar disclosure to paragraphs [0008], [0009], [0029], and
[0044] of the ʼ526 publication, we will consider the disclosure in the
aforementioned portions of the Specification as AAPA.
3 Appellants did not list this rejection in the grounds of rejection to be
reviewed on appeal. App. Br. 11. The Examiner’s Answer maintains this
rejection. Ans. 7-8.
Appeal 2012-002556
Application 10/543,488

4
to experiment and optimize the tension in an anchoring system
for a semi[-]submersible platform . . . by adjusting the tension
in mooring lines, in order to achieve a predictable result of
making the natural heave period correspond to or closely match
a known cancellation period by finding an optimal vertical
stiffness as a percentage of the water plane stiffness for the
floating structure to counter the effects of adverse weather and
provide a predictable response of the structure to a sea state to
improve dynamic stability.
Ans. 6.
Appellants argue that none of Gottsche, Pollack, Byle, and AAPA,
individually or in combination, teach or suggest that the heave natural period
of the floating structure corresponds to a cancellation period of the floating
structure as required by independent claims 1, 10, 11, and 17. App. Br. 14-
22. Appellants also argue that all of the teaching references, namely,
Pollack, Byle, and AAPA “suggest that the heave natural period [of] the
floating structure be pulled away from the cancellation period of the floating
structure, not pulled down to correspond to the cancellation period of the
floating structure.” App. Br. 14. Indeed, all of Pollack, Byle, and AAPA
suggest that the heave natural period be above 20 seconds to be significantly
away from the primary wave period (e.g., 14-16 seconds in the Gulf of
Mexico). See Pollack, col. 1, ll. 46-67 and col. 4, ll. 25-28; Byle, col. 4, ll.
24-52, col. 5, ll. 16-67, and col. 6, ll. 1-8; and AAPA, p. 2, ll. 5-14. Thus,
Appellants further argue that “it is simply hindsight to argue that a person
skilled in the art would have been motivated to start experimenting with the
tension in the anchoring system,” because:
At the time the claimed invention was made, a person skilled in
the art did not know that the amplification of the heave motions
disappears when the floating structure is moored to the sea bed
such that the heave natural period corresponds to the
Appeal 2012-002556
Application 10/543,488

5
cancellation period, or that the shape of the floating structure's
RAO changes as exemplified in the present application in figure
4 (which illustrates a RAO for a floating structure according to
the claimed invention) when a floating structure is moored to
the seabed such that the heave natural period corresponds to the
cancellation period. The fact that the amplification of the heave
motions disappears when the claimed invention is employed
can therefore hardly be considered to have been an expected
result for a skilled person at the time the invention was made.
Reply Br. 18.
In construing the claim language that the heave natural period of the
floating structure “corresponds to” the cancellation period of the floating
structure, we note that we determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
it would be interpreted by one of ordinary skill in the art. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Ordinary
and customary meanings of the verb “correspond” are “have a close
similarity; match or agree almost exactly” and “be analogous or equivalent,”
and an ordinary and customary meaning of the adjective “equivalent” is
“equal in value, amount, function, meaning, etc.” The Concise Oxford
English Dictionary, 11th Edition, Oxford University Press, © 2008, available
at http://lionreference.chadwyck.com (last visited: Feb. 8, 2014). The
definition of “corresponds” appears to be consistent with the usage of the
term in Appellants’ Specification. In particular, Appellants disclose that
“[i]t has been found that if the mooring system has a vertical stiffness
corresponding to about 20% of the water plane stiffness, the natural period
correspond[s] to the cancellation period” and “[t]he water plane stiffness is
defined as ρgAw.”
Appeal 2012-002556
Application 10/543,488

6
Since the phrase “corresponding to,” in the Specification’s discussion of “a
vertical stiffness corresponding to about 20% of the water plane stiffness”
clearly means “equal to,” one of ordinary skill in the art, in light of the
Specification, would understand “corresponds to” in claim 1’s recitation of
“a natural period of the floating structure corresponds to the cancellation
period of the floating structure” to mean “equal to.”
Applying this construction of “corresponds to” to the present case, we
agree with Appellants that the Examiner’s rejection relies on hindsight. The
Examiner’s reasoning that it would have been obvious to one of ordinary
skill in the art to “optimize the tension in an anchoring system for a semi[-
]submersible platform . . . by adjusting the tension in mooring lines, in order
to achieve a predictable result of making the natural heave period correspond
to or closely match a known cancellation period” lacks rational
underpinning. The Examiner’s reliance on the principle of routine
optimization, as set forth in In re Aller, 220 F.2d 454, 456 (CCPA 1955) (the
discovery of an optimum value of a result effective variable is ordinarily
within the skill of the art), is unavailing to the address the limitation of “a
vertical stiffness in the anchoring system which is approximately 20% of the
waterplane stiffness for the floating structure” which would in turn result in
the natural heave period of the floating structure corresponding to the
cancellation period of the floating structure. The Examiner does not point to
any evidence that tuning a vertical stiffness in the anchoring system to a
percentage of the waterplane stiffness of the floating structure, in order to
make the heave natural period of the floating structure correspond to the
cancellation period of the floating structure, was recognized in the prior art
to be a result effective variable. See In re Antonie, 559 F.2d 618, 620
Appeal 2012-002556
Application 10/543,488

7
(CCPA) (exceptions to the general rule of Aller include where the parameter
to be optimized is not recognized in the art to be a result effective variable).
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 10, 11, and 17, and claims 2-9, 12-16, and 18
dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Gottsche,
Pollack, Byle, and AAPA.

Rejection II – Obviousness based on
Gottsche, Pollack, Byle, AAPA, and Wetch
The Examiner maintains the rejection of claims 5-10 under 35 U.S.C.
§ 103(a) as unpatentable over Gottsche, Pollack, Byle, AAPA, and Wetch.
Ans. 7-8. Appellants present no arguments of error regarding this rejection.
See App. Br. 12-23; see also Reply Br. 2-21. Thus, we are constrained to
summarily sustain the Examiner’s rejection of claims 5-10 under 35 U.S.C.
§ 103(a) as unpatentable over Gottsche, Pollack, Byle, AAPA, and Wetch.
See In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that Board did not
err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when
the applicant failed to contest the rejection on appeal).

DECISION
We REVERSE the Examiner’s rejection of claims 1-18 under 35
U.S.C. § 103(a) as unpatentable over Gottsche, Pollack, Byle, and AAPA.
We SUMMARILY AFFIRM the Examiner’s rejection of claims 5-10
as unpatentable over Gottsche, Pollack, Byle, AAPA, and Wetch.

Appeal 2012-002556
Application 10/543,488

8
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)(1)(iv).
AFFIRMED-IN-PART

Klh