Ex Parte Teigen et al

Patent Trial and Appeal Board

Sep 13, 2016

13225016 (P.T.A.B. Sep. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/225,016 09/02/2011
28116 7590 09/15/2016
WestemGeco L.L.C.
10001 Richmond Avenue
IP Administration Center of Excellence
Houston, TX 77042
FIRST NAMED INVENTOR
Oeyvind TEIGEN
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.
14.0357-US-CNT 1622
EXAMINER
BREIER, KRYSTINE E
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
09/15/2016 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):
USDocketing@slb.com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OEYVIND TEIGEN, NICOLAS GOUJON, and
LARS BORGEN
Appeal2014-007171
Application 13/225,016
Technology Center 3600
Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4--8, 10, and 11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claims are directed to a seismic streamer platform. Spec. (Title).
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An apparatus comprising:
a seismic streamer cable;
at least one seismic sensor; and
Appeal2014-007171
Application 13/225,016
at least one rigid mount to secure said at least one seismic
sensor to the streamer cable, the at least one rigid mount having
a natural frequency higher than 150 Hertz.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mascarenhas
Erath
Laws
Tenghamn
us 4,979,795
us 6,128,251
US 2005/0073909 Al
US 2008/0253226 Al
REJECTIONS
Dec. 25, 1990
Oct. 3, 2000
Apr. 7, 2005
Oct. 16, 2008
(I) Claims 1, 2, 5, 6, 8, and 10 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Erath and Tenghamn.
(II) Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Erath, Tenghamn, and Laws.
(III) Claims 7 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Erath, Tenghamn, and Mascarenhas.
OPINION
Rejection(!)
Claims 1 and 8
Claim 1 recites, in part, "at least one rigid mount to secure said at least
one seismic sensor to the streamer cable, the at least one rigid mount having
a natural frequency higher than 150 Hertz." Appeal Br. 19. Claim 8 recites
a substantially similar feature. Id.
The Examiner finds that Erath discloses most of the features recited in
claim 1, but does not disclose a rigid mount having a natural frequency
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higher than 150 Hz. Final Act. 3. Nonetheless, the Examiner finds that
Tenghamn teaches that (i) the natural frequency of a sensor mount depends
on various characteristics of the mount, (ii) noise attenuation properties of
the mount are dependent on the natural frequency of the mount, (iii) and that
a relatively high natural frequency is provides a better signal response in the
non-noise seismic frequencies. Final Act. 4 (citing Tenghamn i-fi-132-33, 35,
39) (emphasis added). The Examiner reasons that "[i]t would have been
obvious to one of ordinary skill in the art at the time of the invention to
optimize noise attenuation in the unwanted frequencies by adjusting the
natural frequency as suggested by Tenghamn since such a modification
would have given improved data." Final Act. 4 (emphasis added). The
Examiner also states, "[i]t has further been held that it is not inventive to
discover the optimum or workable range by routine experimentation." Final
Act. 4 (emphasis added).
Appellants assert, "the Final Office Action appears to be improperly
relying on 'design choice,' as the Final Office Action states, 'it has further
been held that it is not inventive to discover the optimum or workable range
by routine experimentation.'" Appeal Br. 10. Appellants then assert that the
use of per se rules in an obviousness analysis is improper. See Appeal Br.
10 (citing In re Ochiai, 71F.3d1565 (Fed. Cir. 1995)). Appellants also
state, "Tenghamn discusses 'the resonance frequency of the suspension of
each sensor within the sensor jacket,' (Tenghamn, para. no. [0039]) which
'compliments and augments the reduction in noise from employing the
particle motion sensor' (Tenghamn, para. no. [0039])." Appeal Br. 10.
We are not persuaded by Appellants' arguments regarding the
inapplicability of design choice in the rejection of claim 1 because the Final
Action relies on the doctrine of optimization, not design choice, in finding
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that the resonant frequency recited in claim 1 would have been obvious. 1
See Final Act. 2--4. In this regard, Appellants acknowledge that "Tenghamn
discusses 'the resonance frequency of the suspension of each sensor within
the sensor jacket,' which 'compliments and augments the reduction in noise
from employing the particle motion sensor."' Appeal Br. 10 (citations
omitted). Thus, Tenghamn recognizes the natural frequency of the
suspension of each sensor within the sensor jacket as a result-effective
variable. As explained in In re Applied Materials, Inc., 692 F.3d 1289, 1296
(Fed. Cir. 2012):
"[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation." Aller, 220 F.2d at 456. This
rule is limited to cases in which the optimized variable is a
"result-effective variable." In re Antonie, 559 F.2d 618, 620
(CCPA 1977); see Boesch, 617 F.2d at 276 ("[D]iscovery of an
optimum value of a result effective variable . . . is ordinarily
within the skill of the art."). In the present case, because the prior
art disclosed values overlapping the claimed ranges, the "general
conditions" of the claim are disclosed. See Aller, 220 F.2d at
456; see also Boesch, 617 F.2d at 276. The question is whether
the dimensions were known to be result-effective variables.
Accordingly, as the natural frequency of the suspension is recognized in
Tenghamn as a result-effective variable, we do not find the Examiner's
application of the doctrine of optimization of a known result-effective
variable to be inadequate. Thus, Appellants' contention that the Examiner
applied a "per se" rule without conducting a fact-specific analysis is not
1 Although the Examiner addresses Appellants' arguments regarding design
choice in the Answer (Ans. 2-3), the rejection from which Appellants'
appeal is based on optimization (Final Act. 2--4), and the Examiner's
discussion of design choice in the Answer does not negate reasoning for the
rejection set forth in the Final Action.
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Application 13/225,016
persuasive, and we sustain the Examiner's rejection of claim 1 as
unpatentable over Erath and Tenghamn. Appellants make the same
arguments for claim 8 (Appeal Br. 12), and for the reasons discussed above,
we also sustain the Examiner's rejection of independent claim 8 as
unpatentable over Erath and Tenghamn.
Claim 5
Dependent claim 5 specifies that the sensor recited in claim 1 is a
pressure sensor. Appeal Br. 19. Appellants now argue that "Tenghamn
discusses a resonance frequency for a particle motion sensor and a resonant
frequency for a particle motion sensor mounting," and "neither Erath nor
Tenghamn discusses or otherwise renders obvious a resonant frequency or
natural frequency of a pressure sensor or a natural frequency for a mount for
a pressure sensor." Id. at 13.
In response, the Examiner finds that Erath teaches use of a pressure
sensor, and the Examiner states, "[a]lthough Tenghamn teaches particle
motion sensors specifically, it would have been obvious to one of ordinary
skill in the art that the noise attenuation provided by the higher natural
frequencies would have been equally applicable to pressure sensors." Ans.
4.
Appellants contend "[a]lthough Tenghamn discusses why its
resonance frequency may be used to purportedly attenuate noise in
geophones, the skilled artisan would readily recognize that this discussion
would be inapplicable to pressure sensors." Reply Br. 4.
We agree with Appellants on this point inasmuch as Examiner has
pointed to no evidence, and we find none, indicating that providing a mount
with a natural frequency as recited would work equally well with a pressure
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sensor as with a particle motion sensor. Accordingly, we do not sustain the
Examiner's rejection of dependent claim 5.
Appellants do not make separate arguments for any of claims 2, 6, or
10. Accordingly, we sustain the Examiner's rejection of these claims.
Rejection (II)
Appellants make no separate arguments for the patentability of
dependent claim 4. Accordingly, we sustain this rejection of claim 4 as
unpatentable over Erath, Tenghamn, and Laws.
Rejection (111)
Claim 7 recites, "[t]he apparatus of claim 1, wherein the cable has a
bending stiffness of at least fifty Nm2." Appeal Br. 19.
The Examiner finds that Mascarenhas teaches an undersea cable with
a bending stiffness of about 409 Nm2. Final Act. 6. The Examiner reasons
that it would have been obvious to modify the combination of Erath and
Tenghamn to have the bending stiffness taught by Mascarenhas "since such
a modification would have provided a torsionally balanced cable without
looping and kinking tendencies; a reduction in installation costs; an increase
in installed cable reliability; and reduced sagging in the cable, leading to
sensors which are more in-line with each other at approximately the same
depth." Final Act. 6.
Appellants contend that Mascarenhas does not disclose that the
benefits listed by the Examiner are produced by controlling bending
stiffness, instead, Mascarenhas teaches controlling other factors, such as the
cable's torsional stiffness to bending stiffness ratio. See Appeal Br. 14--17.
In response, the Examiner finds that Mascarenhas controls the cable's
torsional stiffness to bending stiffness ratio via control of relatively few
cable structure parameters, and "[g]iven that the invention discusses control
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Application 13/225,016
of 'relatively few cable structure parameters' and subsequently discusses a
specific value for bending stiffness, it would be obvious that bending
stiffness is one of those parameters which would lead to the stated
advantages." Ans. 6. The Examiner states, "[t]hus, Mascarenhas's
teachings further give rise to the expectation that applying the bending
stiffness to Tenghamn's cables for use in an undersea context would result in
such benefits as a reduction in installation costs and an increase in installed
cable reliability." Id. As an apparent alternative rationale, the Examiner
states,
[ f]urthermore, there are numerous other reasons that a
person of ordinary skill in the art at the time of the invention
would have modified the cable of Tenghamn with the bending
stiffness ofMascarenhas, for example, it would have reduced the
sagging in the cable, leading to sensors which are more in-line
with each other at approximately the same depth.
Id. at 7.
We are persuaded by Appellants' arguments because Mascarenhas
discusses achieving his disclosed benefits via controlling a torsional stiffness
to bending stiffness ratio, and does not disclose selecting any particular
bending stiffness in order to achieve this control. In other words, regardless
of the magnitude of the bending stiffness of the cable, an appropriate
torsional stiffness to bending stiffness ratio may also be provided so long as
an appropriate torsional stiffness is selected.
Further, as for reducing sagging and providing sensors in line with
each other, as Appellants note (see Appeal Br. 14--15), Erath and Tenghamn
relate to seismic streamers, and Mascarenhas relates to an undersea
telecommunications cable. As noted above, Mascarenhas provides
mechanical benefits via control of a ration of torsional stiffness to bending
stiffness, and the Examiner does not direct our attention to any objective
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evidence supporting a conclusion that a bending stiffness of at least fifty
Nm2 would have provided any particular benefit to the streamer disclosed in
Erath. Accordingly, we do not sustain the Examiner's rejection of claim 7.
For the same reasons, we do not sustain the Examiner's rejection of claim
11.
DECISION
(I) The Examiner's rejection of claims 1, 2, 5, 6, 8, and 10 as
unpatentable over Erath and Tenghamn is affirmed as to claims 1, 2, 6, 8,
and 10 and is reversed as to claim 5.
(II) The Examiner's rejection of claim 4 as unpatentable over Erath,
Tenghamn, and Laws is affirmed.
(III) The Examiner's rejection of claims 7 and 11 as unpatentable
over Erath, Tenghamn, and Mascarenhas is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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