Ex Parte Piter et al

Patent Trial and Appeal Board

Sep 16, 2016

13201871 (P.T.A.B. Sep. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/201,871 09/27/2011 Edward Stephen Piter
23632 7590 09/20/2016
SHELL OIL COMPANY
PO BOX 2463
HOUSTON, TX 77252-2463
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.
TH3494(US) 4040
EXAMINER
WIEST, ANTHONY D
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
09/20/2016 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):
USPatents@Shell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD STEPHEN PITER,
WILLIAM MICHAEL PRITCHETT, ROY KEITH SMITH,
and WILBERT RAY ULBRICHT
Appeal2014-009024
Application 13/201,871
Technology Center 3600
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
GORDON D. KINDER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Edward Stephen Piter et al. (Appellants) appeal under 35 U.S.C. § 134
from the rejection of claims 1 and 3-15 under 35 U.S.C. § 103(a) as
unpatentable over Edgar (US 4,864,957, iss. Sept. 12, 1989). 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The rejection of claims 1 and 3-15 on the ground of nonstatutory double
patenting was withdrawn in the Advisory Action mailed April 16, 2014.
Appeal2014-009024
Application 13/201,871
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:
a floating vessel comprising a deck having a longitudinal
axis and a lateral axis;
a plurality of support structures in an array spaced along
the longitudinal axis and the lateral axis; and
a skid beam assembly resting on the plurality of support
structures, wherein a top of skid beam assembly is inclined at an
angle from 0.1 to 3 degrees relative to the floating vessel deck
along the longitudinal axis and wherein the skid beam assembly
comprises:
a plurality of lateral support members spanning a lateral
distance between adjacent support structures and
a plurality of longitudinal support members spannmg a
longitudinal distance between adjacent support structures.
DISCUSSION
Appellants argue claims 1 and 3-15 together. See Appeal Br. 3-15.
We select independent claim 1 as the representative claim, and claims 3-15
stand or fall with claim 1.
The Examiner finds that Edgar discloses all of the limitations of claim
1 except that "Edgar does not explicitly disclose the specified parameters
wherein the top of the skid beam assembly is inclined at an angle of 0.1 to 3
degrees of inclination or .5 to 1.5 degrees." Final Act. 6. The Examiner
further finds that "Edgar does disclose (Col. 1, Lines 65---67) that, 'The beam
angle is adjustable during installation to accommodate the hydrostatic and
operational characteristics of the ship.'" Id. Based on these findings the
Examiner determines that it would have been obvious to adjust the angle to
be between 0.1 to 3 degrees. See id. The Examiner further explains that:
2
Appeal2014-009024
Application 13/201,871
Id.
While Edgar does not explicitly recite the specified parameters
one of ordinary skill would understand that carrying the load at
the lower end of the skid beam with respect to the deck would
cause the transport vessel to have a lowered center-of-gravity.
The lowered center of gravity would be a hydrostatic and
operational consideration in determining the adjustable beam
angle during the design of the device of Edgar.
Appellants argue that "Edgar fails to disclose 'wherein the top of the
skid beam assembly is inclined at an angle of 0.1 to 3 degrees.'" Appeal Br.
3. Appellants are correct; however, as this fact is not contested, Appellants
do not apprise us of error.
Noting that in the rejection the Examiner refers to MPEP § 2144
regarding changes in shape and size, Appellants further argue that "if the
claimed relative dimensions would perform differently than the prior art
device, then the claimed device is patentably distinct from the prior art
device." Id. at 4 (referring to Gardner v. TEC Syst., Inc., 725 F.2d 1338
(1984).
However, a change in size or shape is not the only rationale relied
upon by the Examiner in rejecting claim 1. Rather, the rejection relies first
and foremost upon Edgar's statement that "[t]he beam angle is adjustable
during installation to accommodate the hydrostatic and operational
characteristics of the ship." Edgar 1:65-67; Final Act. 6. As discussed
infra, Appellants' do not apprise us of error in the Examiner's reasoning
with respect to this rationale. Accordingly, we need not consider the
sufficiency of the Examiner's supplemental rationale. 2
2 We note that the claimed range does not appear to be critical. Rather,
referring to the disclosed ranges, the Specification states, "those having
ordinary skill in the art will appreciate that the present disclosure is not so
3
Appeal2014-009024
Application 13/201,871
Considering the explicit motivation for the proposed modification
articulated by the Examiner, Appellants contend that "there is no indication
that the device of Edgar would perform as Applicants' claimed device."
Appeal Br. 4. In support of this contention, Appellants argue that "there is
no indication in Edgar that 'adjusting the beam angle during installation to
accommodate the hydrostatic and operation characteristics of the ship'
would impart a taper onto the beam that would allow for the vessel to have a
lowered center-of-gravity and be more stable at transport." Id.
As noted by the Examiner (Ans. 4), Appellants' argument is not
commensurate in scope with claim 1, which does not require a taper that
allows for the vessel to have a lowered center-of-gravity. See Appeal Br. 6.
Moreover, it is not necessary for the prior art to serve the same purpose as
that disclosed in Appellants' Specification in order to support the conclusion
that the claimed subject matter would have been obvious. See KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 419 (2007) ("In determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the [Appellants] controls."); see also In re Linter,
458 F.2d 1013, 1016 (CCPA 1972).
In addition, Appellants argue that "the Final Office Action does not
describe how the proposed modification would allow for the load to be
carrier at the lower end of the skid beam." Appeal Br. 4--5.
Again, Appellants' argument is not commensurate in scope with claim
1, which does not require a load or require such load to be carried at the
lower end of the skid beam. See id. at 6. Furthermore, "it is not necessary
that the inventions of the references be physically combinable to render
limited, and in other embodiments, the taper of the skid beam assembly may
be disposed at an angle outside of the above described range." Spec. 6.
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Appeal2014-009024
Application 13/201,871
obvious the invention under review." In re Sneed, 710 F.2d 1544, 1550
(Fed. Cir. 1983) (citation omitted). The relevant inquiry is whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). "Combining the teachings of
references does not involve an ability to combine their specific structures."
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
For these reasons, Appellants do not apprise us of error. We sustain
the Examiner's decision rejecting claim 1, and claims 3-15 which fall
therewith.
DECISION
The Examiner's rejection of claims 1 and 3-15 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.
§ l.136(a)(l )(iv).
AFFIRMED
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