Ex Parte S¿dow et al

Patent Trial and Appeal Board

Sep 19, 2016

12800906 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/800,906 05/25/2010
137053 7590 09/21/2016
PATTERSON & SHERIDAN, LLP- PGS
24 Greenway Plaza
Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
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.
PGS-10-14US 3924
EXAMINER
SCHINDLER, DAVID M
ART UNIT PAPER NUMBER
2858
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
psdocketing@pattersonsheridan.com
Pair_Eofficeaction@pattersonsheridan.com
docketing@pgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUSTAV GORAN MATTIAS SUDOW,
ULF PETER LINDQVIST, ANDRAS ROBERT JUHASZ, and
BENGT FINN0EN
Appeal2015-004533
Application 12/800,906
Technology Center 2800
Before BRADLEY R. GARRIS, A VEL YN M. ROSS, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-25 and 29. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to the Appellants, the real party in interest is Petroleum
Geophysical AS. Appeal Br. 2.
Appeal2015-004533
Application 12/800,906
STATEMENT OF THE CASE
Appellants describe the present invention as relating to the field of
marine electromagnetic streamers. Spec. ,-i 3. A marine electromagnetic
sensor streamer may be towed behind a survey vessel and is used to make
measurements in order to identify materials such as petroleum below the
water's surface. Id. at ,-i 4. The Specification describes making a marine
electromagnetic streamer through a particular extrusion technique. Id. at ,-i,-i
7, 8. Claims 1 and 9, reproduced below with emphases added, are
illustrative of the claimed subject matter:
1. A method for making a marine electromagnetic survey
streamer, comprising:
affixing connectors to longitudinal ends of a centrally disposed
strength member;
extending at least one electrical power line along the length of
the strength member;
extending at least one signal communication line along the
length of the strength member, wherein optical fibers separate the at
least one electrical power line from the at least one signal
communication line, and the strength member, the connectors, the
electrical power line, the optical fibers, and the at least one signal
communication line form a mechanical harness;
affixing electrodes to the mechanical harness at selected
positions; and
drawing the mechanical harness through a co-extruder, the
co-extruder filling void spaces in the harness with a void fill
material, the co-extruder applying a jacket to an exterior of the
void-filled harness.
9. A marine electromagnetic survey streamer segment comprising:
a centrally disposed strength member extending between
longitudinal ends of the streamer segment;
connectors coupled to each end of the strength member;
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Application 12/800,906
at least one signal communication line extending along the
strength member;
at least one electrical power line extending along the
strength member, the at least one signal communication line
disposed opposite a portion of the strength member from the at
least one electrical power line;
electrodes disposed at selected positions along the strength
member;
a jacket coupled to the connectors and at least partially covering
the strength member, the at least one signal communication line, the at
least one electrical power line, and the electrodes; and
void fill material filling void spaces within the jacket.
September 16, 2014, Response to Non-Compliant Appeal Brief at p. 4.
REFERENCES
The Examiner relied upon the prior art below in rejecting the claims
on appeal:
Chang et al.
(hereinafter "Chang")
11etzbmver et al.
(hereinafter "Metzbower")
T enghamn et al.
(hereinafter "T enghamn '5 3 5 ")
Davids son
Nichols
Tenghamn
(hereinafter "T enghamn '7 41 ")
us 5,796,676 Aug. 18, 1998
us 7,142,481 Nov. 28, 2006
us 7,446,535 Nov. 4, 2008
US 7,602,191 Oct. 13, 2009
US 2005/0134278 Al June 23, 2005
US 2009/0140741 Al June 4, 2009
REJECTIONS
The Examiner maintains the following rejections on appeal:
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Application 12/800,906
Rejection 1. Claim 9 under 35 U.S.C. § 112 as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
the applicant regards as the invention. Final Act. 3. 2
Rejection 2. Claims 9-12 under 35 U.S.C. § 103 as unpatentable over
Tenghamn '535 in view of Chang. Id.
Rejection 3. Claims 13-15 under 35 U.S.C. § 103 as unpatentable
over Tenghamn '535 in view of Chang and in further view of Nichols. Id. at
6.
Rejection 4. Claims 1--4 under 35 U.S.C. § 103 as unpatentable over
Tenghamn '535 in view of Metzbower and Chang. Id. at 8.
Rejection 5. Claims 5-7 under 35 U.S.C. § 103 as unpatentable over
Tenghamn '535 in view ofMetzbower and Chang and in further view of
Nichols. Id. at 12.
Rejection 6. Claim 8 under 35 U.S.C. § 103 as unpatentable over
Tenghamn '535 in view ofMetzbower and Chang in view ofDavidsson. Id.
at 14.
Rejection 7. Claims 16-19, 24, 25, and 29 under 35 U.S.C. § 103 as
unpatentable over Tenghamn '535 in view of Chang and Davidsson. Id. at
15.
Rejection 8. Claims 20-22 under 35 U.S.C. § 103 as unpatentable
over Tenghamn '535 in view of Chang and Davidsson and in further view of
Nichols. Id. at 21.
2 In this decision, we refer to the Final Office Action mailed February 27,
2014 ("Final Act."), the Appeal Brief filed August 29, 2014 ("Appeal Br."),
the Examiner's Answer mailed January 13, 2015 ("Ans."), and the Reply
Brief filed March 11, 2015 ("Reply Br.").
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Application 12/800,906
Rejection 9. Claim 23 under 35 U.S.C. § 103 as unpatentable over
T enghamn '5 3 5 in view of Chang and Davidsson and in further view of
Tenghamn '741. Id. at 23.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")).
Rejection 1. The Examiner rejects claim 9 as indefinite under 35
U.S.C. § 112, paragraph 2, because "[t]he phrase 'the at least one signal
communication line disposed opposite a portion of the strength member
from the at least one electrical power line" is not clearly understood. Final
Act. 3. The Examiner states that it is clear the communication line is
opposite a portion of the strength member but not clear "how it is opposite
the strength member from the power line." Id.; see also Ans. 38-39.
Appellants explain that "opposite" may be understood with reference
to Figures 5 and 6 and accompanying text at, for example, paragraphs 25-27
of the Specification. We agree with Appellants on this point. In the context
of the Specification, the phrase at issue refers to at least one signal line being
on the other side of a portion of the strength member from an electrical
power line. For example, Figure 6 of the Specification, reproduced below,
illustrates each of four openings for signal wires l 2E on the other side of a
portion of centrally disposed strength member 42 than each of the electrical
power lines 46.
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Application 12/800,906
FIG. 6
Figure 6 depicts a cross-section of an example buoyancy spacer in
accordance with the Specification. Spec. iii! 15, 26-27.
Thus, we do not sustain this rejection.
Rejection 2. The Examiner rejects claims 9-12 as obvious over
Tenghamn '535 in view of Chang. Id. The Appellants do not separately
argue claims 10-12. We therefore limit our discussion to claim 9. Claims
10-12 stand or fall with that claim. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Tenghamn '535, much like the present claims, is directed to an
electromagnetic sensor cable for marine surveying. Tenghamn '535 Title,
Abstract, 1 :23-37. The Examiner finds that claim 9 teaches most elements
of claim 9. Final Act. 4, iJ 14; see also Tenghamn '535 Figs. 1-3, 3: 17-
6: l O. The Examiner finds that Tenghamn '535 does not explicitly disclose a
signal power line extending along a strength member with at least one signal
communication line disposed opposite a portion of the strength member
from the at least one electrical power line. Final Act. 4, iJ 15. The
Examiner, however, finds that Chang discloses a centrally disposed strength
member with at least one signal communication line disposed opposite a
portion of the strength member from the at least one electrical power line.
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Application 12/800,906
Id. at 5, ii 16; see also Chang Figs. 2--4, 2:24-59. The Examiner concludes
that it would have been obvious for a person of skill to utilize a signal
communication line disposed opposite a portion of the strength member
from at least one electrical power line, as taught by Chang, in T enghamn
'535 in order to minimize signal noise. Final Act. 4. ii 17; May 28, 2014,
Advisory Action 2 ("Because Tenghamn has a combined cable using both
electrodes and hydrophones, a teaching of how to orient the cable and
related elements such that noise for the hydrophone sensors are minimized is
relevant and useful."); Ans. 8-9. A preponderance of the evidence supports
these findings and the Examiner's conclusion.
Appellants argue that Tenghamn '535 does not teach a "centrally
disposed strength member" as recited by claim 9. Appeal Br. 9. To address
this argument, we first construe the term "centrally disposed." The most
relevant ordinary dictionary definition defines "central" as "situated at, in, or
near the center." See Merriam Webster's Collegiate Dictionary 186
(Webster-ivierriam, Inc., 10th ed. 1994). Appellants' Specification does not
specially define "centrally disposed," but it does state that its spacers "may
include openings for a centrally disposed strength member 42 .... " Spec. ii
25. We thus construe "centrally disposed" as put in place at, in, or near the
center.
The Examiner correctly finds that Tenghamn '535 teaches a centrally
disposed strength member. Ans. 12. In particular, Figure 3 of Tenghamn
'5 3 5 is reproduced below and depicts three passages (one passage labeled
44B and two passages labeled 44B') extending through the Tenghamn '535
electrode sleeve.
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Application 12/800,906
f/G. 3
Tenghamn '535 Figure 3 depicts an example electrode sleeve in detail view.
Tenghamn '535 3: 11-12. Tenghamn '535 states that strength members may
extend through passages 44B: "The sleeve 44 is shown in oblique view [in
Figure 3] so that passages for the harness ( 40 in FIG. 2) shown at 44B and
for the strength members (42 in FIG. 2) shown at 44B can be observed
extending from one longitudinal end to the other of the sleeve 44."
Tenghamn '535 5:59-64 (emphases added). Thus, Tenghamn '535 teaches
that a strength member may extend through the very center of its sleeve.
See, e.g., In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) ("all disclosures
of the prior art, including unpreferred embodiments, must be considered").
Moreover, even if we were to accept, arguendo, Appellants' position
that Tenghamn '535 has only offset strength members (Appeal Br. 7-8;
Reply Br. 4; April 25, 2014, Gustav Goran Mattias Siidow Declaration
(hereinafter "Siidow Deel.") ,-i 9), Tenghamn '535 nonetheless teaches
strength members near the center of its apparatus. Tenghamn '535 Figures
2, 3. Thus, Tenghamn '535 teaches "centrally disposed" strength members
as the term "centrally disposed" is properly construed in light of the
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Specification. Appellants' argument with respect to this issue does not
identify Examiner error.
Appellants also appear to argue that a person of ordinary skill would
have had no reason to incorporate Chang's arrangement of cables into
Tenghamn '535. Appeal Br. 9. The Examiner, however, finds that,
although Tenghamn '535 does not explain how "signal and power lines
inside the wire harness are arranged," Chang fills this gap. Ans. 22. The
Examiner finds that Chang's arrangement allows for electrical power lines
and signal communications "positioned at locations where they won't
electromagnetically interfere with each other" because, absent such an
arrangement, "current running through a wire (line) will generate an
electromagnetic field which can cause noise in other nearby cables." Ans.
18. A preponderance of the evidence supports these findings. Moreover,
use of Chang's signal and power line arrangement in Tenghamn '535 would
improve Tenghamn '535 in the same manner it improves Chang and is no
more than the predictable use of a prior art function according to its
established function. KSR Intern. Co. v. Teleflex Inc., 590 U.S. 398, 417
(2007). The Examiner's obviousness conclusion is well supported.3
In reaching the findings and conclusions above, we have carefully
reviewed and considered the April 25, 2014, Rule 132 Siidow Declaration.
Ultimately, the Siidow Declaration does not establish error because, for
example, we disagree with Dr. Siidow' s interpretation of the Tenghamn
reference. Siidow Deel. ,-i,-i 7-10. Moreover, Dr. Siidow's factual
3 Because the Examiner's explanation regarding signal noise is sufficient to
justify combining Chang's teaching of signal and power line arrangement
with Tenghamn '535, we need not address disputes concerning additional
rationales concerning, for example, streamlined configuration. See, e.g.,
Ans. 4-5; Reply Br. 5.
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statements, even where correct, do not establish error. For example, Dr.
Siidow states that Chang does not explicitly teach "noise reduction resulting
from the cable arrangements of Figures 3 and 4." Siidow Deel. iJ 23. Even
if not explicit in Chang, however, the Examiner properly identified the
benefit of noise reduction as a reason a person of skill would have combined
Chang's teaching regarding cable arrangement with the Tenghamn '535
apparatus. KSR Intern. Co., 550 U.S. at 419 ("Helpful insights ... need not
become rigid and mandatory formulas; and when it is so applied, the TSM
[teaching, suggestion, or motivation] test is incompatible with our
precedents . . . . In many fields it may be that there is little discussion of
obvious techniques .... ").
Because Appellants do not identify reversible error with respect to the
Examiner's obviousness rejection of claim 9, we sustain the Examiner's
rejection of claims 9-12.
Rejection 3. The Examiner rejects claims 13-15 as obvious over
Tenghamn '535 in view of Chang and in further view of Nichols. Final Act.
6. Appellants raise no arguments with respect to these claims other than
those addressed above. Appeal Br. 14. We therefore sustain this rejection.
Rejection 4. The Examiner rejects claims 1--4 as obvious over
Tenghamn '535 in view of Metzbower and Chang. Final Act. 8. We focus
on claim 1 because Appellants do not separately argue claims 2--4. 37
C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner finds that Tenghamn '535 does not teach claim l's step
relating to co-extrusion, but that Metzbower teaches this step. Id. at 9. The
Examiner concludes that it would have been obvious to a person of ordinary
skill to modify Tenghamn '535 with Metzbower's co-extrusion teachings in
order to reap the benefits of co-extrusion taught by Metzbower. Id. at 9-1 O;
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see also Metzbower 11:15-57. A preponderance of the evidence supports
these findings and the Examiner's conclusion.
Appellants argue that a person of ordinary skill would not have used a
co-extrusion process to construct the cable assembly of Tenghamn '535
because of various difficulties that such a process would encounter. Appeal
Br. 10-11; Reply Br. 2-3. Dr. Siidow testifies with respect to these
difficulties. Siidow Deel. ,-i,-i 26-36. We agree with the Examiner, however,
that while there may be difficulties in applying co-extrusion to the
Tenghamn '535 cable assembly, these difficulties do not negate expected
benefits. Ans. 5; see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006) ("a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine"). In particular, Metzbower explains that its co-
extrusion method provides numerous benefits:
Methods and apparatus according to the invention [i.e., Metzbower' s
co-extrusion process] may improve the efficiency with which marine
seismic streamers are made, in terms of reduced time to manufacture,
reduced size of facilities needed to make the streamers, and in
reducing the amount of manual handling of the various streamer
components. Streamers made according to the invention may thus
have improved reliability over streamers known in the art . . . . [T]he
invention may make it practical to use gels known in the art for filling
a seismic streamer with a continuous manufacturing process and
apparatus, where prior processes and apparatus may have been
impractical for such use.
Metzbower 11: 15-28; see also Ans. 24-25; Siidow Deel. ,-i 30 ("A co-
extrusion process is advantageous in making cable assemblies because long
lengths of cable assembly can be constructed quickly.") Also, Metzbower
addresses some of the potential difficulties raised by Dr. Siidow. Metzbower
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6: 1-7 :4 (explaining implementation of electrical components into co-
extruded streamer); see also Ans. 26.
Moreover, Dr. Siidow' s testimony concerning the difficulties of
applying co-extrusion to Tenghamn '535 hinges upon Tenghamn '535 not
having a solid core. Siidow Deel. iJ 31. But, as explained above, a
preponderance of the evidence supports the Examiner's finding that
Tenghamn '535 (as modified by Chang) has such a core in at least some
embodiments. See also Ans. 26.
Because Appellants identify no reversible error, we sustain the
Examiner's rejection of claims 1--4.
Rejections 5-9. With respect to claims 5-8, 16-24, 25, and 29,
Appellants raise no arguments with respect to these claims other than those
addressed above. Appeal Br. 11, 14. We therefore sustain these rejections.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
1-25 and 29 under 35 U.S.C. § 103. We reverse the Examiner's rejection of
claim 9 under 35 U.S.C. § 112.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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