Ex Parte MACQUIN

Patent Trial and Appeal Board

Sep 26, 2018

13964178 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/964,178 08/12/2013 Raphael MACQUIN
11171 7590 09/28/2018
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404
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.
0336-184-2/100360US-2 1020
EXAMINER
ARMSTRONG, JONATHAN D
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
Mailroom@ppblaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAPHAEL MACQUIN
Appeal2017-008585
Application 13/964, 178
Technology Center 3600
Before BRANDON J. WARNER, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-9 and 11-20. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, CGG Services SA, which the Appeal Brief
identifies as the real party in interest. Br. 2.
Appeal2017-008585
Application 13/964, 178
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "devices and methods for
limiting and/or preventing deposits on a streamer used underwater and, more
particularly, to a removable second skin mounted on the streamer." Spec.
,r 2. Claims 1, 11, and 18 are independent. Claim 1 is reproduced below.
1. A streamer made of plural sections and usable
underwater for marine seismic surveys, the streamer
compnsmg:
a first skin configured to separate an inside thereof from
surrounding water when the streamer is submerged;
seismic receivers housed inside the first skin; and
a removable second skin configured to surround the first
skin along at least one streamer section length, the removable
second skin including a flexible material with antifouling
properties,
wherein the removable second skin includes a closure
system configured to join sides of the flexible material.
Br. 17 (Claims App.).
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1--4, 6-9, and 11-18 under nonstatutory double patenting
as being unpatentable over claims of U.S. Application No.
14/194,851 in view of Stenzel2 and Lagace. 3
2 U.S. Patent Pub. No. 2012/0176858 Al, published July 12, 2002
("Stenzel").
3 U.S. Patent No. 3,185,497, issued May 2, 1965 ("Lagace").
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Application 13/964, 178
2. Claims 1--4, 7, 8, 11-16, and 18 under nonstatutory double
patenting as being unpatentable over claims of U.S. Application
No. 14/155,421 in view of Stenzel and D'Urso. 4
3. Claims 7 and 15 under 35 U.S.C. § 112, second paragraph, as
indefinite.
4. Claims 1, 3, 4, 6-8, 11-16, and 18 under 35 U.S.C. § I03(a) as
unpatentable over Stenzel and Smith. 5
5. Claim 2 under 35 U.S.C. § I03(a) as unpatentable over Stenzel,
Smith, Hartshome, 6 and D'Urso.
6. Claim 5 under 35 U.S.C. § I03(a) as unpatentable over Stenzel,
Smith, and Ramotowski. 7
7. Claims 9, 17, 19, and 20 under 35 U.S.C. § I03(a) as unpatentable
over Stenzel, Smith, and Manison. 8
ANALYSIS
Double Patenting
Appellant argues that both double patenting rejections summarized
above "should have been provisional non-statutory double patenting
rejections, which should be held in abeyance until one of these applications
is allowed." Br. 14. Appellant also argues that the present application has a
priority date before the priority dates of the applications used in the
4 U.S. Patent Pub. No. 2006/0024508 Al, issued Feb. 2, 2006 ("D'Urso").
5 GB Patent Specification No. 1,579,123 A, published Nov. 12, 1980
("Smith").
6 WO 2011/070411 A2, published June 16, 2011 ("Hartshorne").
7 Thomas Ramotowski and Kirk Jenne, NUWC XP-1 Polyurethane-Urea: A
New, "Acoustically Transparent" Encapsulant for Underwater Transducers
and Hydrophones, September 1, 2003 ("Ramotowski").
8 U.S. Patent No. 5,459,695, issued October 17, 1995 ("Manison").
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Application 13/964, 178
rejection. Id. In the Answer, the Examiner quotes from the MPEP, which
states that "[a] provisional double patenting rejection will be converted into
a double patenting rejection when the first application, which is the basis for
the rejection, publishes as an application publication or issues as a patent."
Ans. 6 (quoting MPEP 1504.06). The Examiner also found that Application
No. 13/964, 178 published as U.S. Patent Pub. No. 2014/0041450 Al. Id.
We are not apprised of error in the Examiner's double patenting
rejections. Appellant contends that the rejections should have been
"provisional" rejections, but as the Examiner points out, the MPEP states
that conversion of a provisional rejection to a double patenting rejection is
appropriate when the first application publishes or issues as a patent. Id.
Appellant does not respond to this argument, or cite to support for its
argument, and we discern no error in the rejections given that all three of the
applications at issue already published, well before the Final Office Action
at issue here. See 13/964,178 (published Feb. 13, 2014 as U.S. Patent Pub.
No. 2014/0041450 Al); 14/194,851 (published Sept. 4, 2014 as U.S. Patent
Pub. No. 2014/0247690 Al); 14/155,421 (published July 24, 2014 as U.S.
Patent Pub. No. 2014/0204706 Al, issued Nov. 1, 2016 as U.S. Patent No.
9,482,768 B2). Moreover, the relief Appellant seeks on appeal-reversal or
abeyance of the rejection "until one of these three applications is allowed"-
does not acknowledge that even provisional nonstatutory double patenting
rejections should not be held in abeyance. See MPEP 804(I)(B)(l) ("As
filing a terminal disclaimer, or filing a showing that the claims subject to the
rejection are patentably distinct from the reference application's claims, is
necessary for further consideration of the [provisional] rejection of the
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Application 13/964, 178
claims, such a filing should not be held in abeyance."); Br. 14. We,
therefore, sustain the double patent rejections.
Indefiniteness
The Examiner rejected claims 7 and 15 because they contain the
phrase "velcro strips" as a type of "closure system," which includes the
trademark VELCRO. Final Act. 5. The Examiner found that "[t]he claim
scope is uncertain since the trademark or trade name cannot be used properly
to identify any particular material or product." Id. Appellant argues that
that "velcro" refers to a trademark, but cites to the MPEP provision
indicating "[t]he presence of a trademark or trade name in a claim is not, per
se, improper under ... 35 U.S.C. § 112, second paragraph." Br. 15 (quoting
MPEP 2173.05(u)). Appellant contends that the trademark refers to a source
of goods, not the goods themselves, and that the claim term "strips"
adequately identifies the goods themselves in the claim. Id.
Appellant acknowledges that the "velcro" term identifies the source of
goods, and that only the term "strips" identifies "the goods themselves." Br.
15. However, merely acknowledging that "velcro" does not identify the
goods themselves does not necessarily resolve the ambiguity, because it begs
the question of why the term remains in the claims. See MPEP 2173.05(u)
("If a trademark or trade name appears in a claim and is not intended as a
limitation in the claim, the question of why it is in the claim should be
addressed. If its presence in the claim causes confusion as to the scope of
the claim, then the claim should be rejected under ... 35 U.S.C. 112, second
paragraph."). Here, the Examiner's rejection notes that "velcro" cannot
structurally limit the claim, and if that is the case, the claim scope is unclear.
We agree. Appellant seems to contend that only the term "strips"
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structurally limits the claim, but it is not clear how "strips," standing alone,
operate as a closure or whether such a term introduces its own indefiniteness
concerns. If "velcro" does not structurally limit the claim, it should be
removed from the claim so that the "strips" term standing alone can be
evaluated by the Examiner. 9
Based on the foregoing, we sustain the indefiniteness rejection of
claims 7 and 15.
Obviousness
Independent claims 1 and 11 require "a removable second skin,"
while independent claim 18 requires "mounting a removable second skin"
and "removing the removable second skin." Br. 17, 19, 21 (Claims App.)
The Examiner found that Stenzel discloses jacket 30 with outer portion 52
that is an "inherently removable" skin. Final Act. 6. The Examiner
construed "removable" as capable of removal, including by cutting or
melting. Ans. 4. Appellant argues that Stenzel fails to disclose the second
removable skin because Stenzel discloses portions 50, 52 of jacket 30 that
are extruded together so that they "merge and weld together into a laminar
structure before cooling." Br. 9 (quoting Stenzel ,r 39).
We agree with Appellant that Stenzel does not inherently disclose a
removable second skin. Stenzel discloses inner portion 50 and outer portion
52 of jacket 30, but after they are extruded together to form a streamer, they
are merged and welded together to form a single material. See Stenzel ,r 39.
9 We do not decide whether the term "strips," without any limiting effect
from the term "velcro," is indefinite or leads to other concerns under§ 112
or § 103. It may be possible to add additional language, such as "a hook and
loop" before "strip," to resolve any ambiguity.
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Stenzel further describes the resulting structure as forming a "continuous
polyurethane jacket 30, without layers." Id. ,r 40. The Examiner takes the
position that the entire jacket can be removed, perhaps not readily, but by
cutting or melting the jacket. Ans. 4. Such an approach effectively removes
the "removable" limitation from the claim. We must construe claim terms
under the broadest reasonable construction, not the broadest possible
construction, and the construction must remain reasonable in light of the
specification. The specification here describes the second skin as "mounted
on the streamer," and removing the second skin by reversing the operation
when the streamer is removed from the water. Spec. ,r,r 39--40. After
removal from the water, the second removable skin "has its closure system
opened while ... the removed second skin being rolled back on the second
skin winch 340," while the streamer with the first skin is stored on a separate
winch for later use. Id. ,r 40. An advantage of the removable second skin is
that it "is separated from the streamer with relatively little effort, and, in the
same time, any fouling deposited thereon is removed." Id. ,r 46. None of
these disclosures from the specification remotely suggests that cutting or
melting off the second removable skin would be an acceptable form of
"removal." Such removal methods would damage the skin and render it
unusable for re-use as contemplated by the specification. Accordingly, the
Examiner's broad construction of "removable" is not reasonable in light of
the specification. While we need not determine the precise contours of the
limitation to resolve this appeal, we construe "removable" here to mean at
least "removable without destruction," which is consistent with the
specification.
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With this construction in mind, we cannot sustain the rejection of
claims 1, 11, or 18. As noted, the Examiner did not use the proper
construction of "removable" and, as a result, did not find that Stenzel
discloses a second removable skin using the proper construction. See Final
Act. 6-8; Ans. 4--5. Our own review of Stenzel, and its merged or welded
together portions 50, 52, does not suggest that outer portion 52 can be
removed without damaging the outer portion and rendering it unusable for
further use. 10 Accordingly, we do not sustain the rejection of independent
claims 1, 11, and 18, or the remaining claims that ultimately depend from
claims 1, 11, and 18.
DECISION
We affirm the decision of the Examiner to reject (1) claims 1--4, 6-9,
and 11-18 under nonstatutory double patenting as being unpatentable over
claims of U.S. Application No. 14/194,851 in view of Stenzel and Lagace;
(2) claims 1--4, 7, 8, 11-16, and 18 under nonstatutory double patenting as
being unpatentable over claims of U.S. Application No. 14/155,421 in view
of Stenzel and D'Urso; and (3) claims 7 and 15 under 35 U.S.C. § 112,
second paragraph, as indefinite.
10 We note that one of the applications that form the basis for the Examiner's
double patenting rejections, Application No. 14/194,851, resulted in a
related appeal, Appeal No. 2017-010324. See Final Act. 14 (citing U.S.
Application No. 14/941,851 ). That application includes claims reciting "a
removable second skin," with other prior art references applied to that claim
limitation. See U.S. Application No. 14/941,851, Final Office Action, 30-31
(mailed Sept. 16, 2016). Those references are not before us in this appeal,
and we do not reach the issue of whether they disclose "a removable second
skin" here.
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Application 13/964, 178
We reverse the decision of the Examiner to reject claims 1-9 and 11-
20 under 35 U.S.C. § 103(a).
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-IN-PART
9