SHELL OIL COMPANY

Patent Trials and Appeals Board

Apr 23, 2020

15029207 - (D) (P.T.A.B. Apr. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/029,207 04/13/2016 Pablo Antonio VEGA PEREZ SP0268-US-PCT 8019
23632 7590 04/23/2020
SHELL OIL COMPANY
P O BOX 576
HOUSTON, TX 77001-0576
EXAMINER
STCLAIR, ANDREW D
ART UNIT PAPER NUMBER
3799
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
Shelldocketing@cpaglobal.com
USPatents@Shell.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PABLO ANTONIO, VEGA PEREZ, and SERGE LATIL

Appeal 2019-006004
Application 15/029,207
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Shell Oil Company,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1, 3–13, and 16. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
The Specification “relates to a loading assembly for conveying a
pressurized gas stream between a floating structure and another structure
located adjacent to the floating structure” and “to a switching system . . . to
operate an engagement mechanism of an emergency disconnection coupler.
Spec. 1:2–8.
The Claims
Claims 1, 3–13, and 16 are rejected. Final Act. 1. The only other
pending claim, claim 14, has been withdrawn from consideration. Id. Claim
1, the sole independent claim on appeal, is illustrative and reproduced below
with emphasis added to the limitation serving as the basis for the Examiner’s
rejections.
1. A loading assembly for conveying a pressurized
gas stream between a floating structure and another structure
that is located adjacent to the floating structure, the loading
assembly comprising:
- a gas conduit adapted to extend between the floating
structure and the other structure, to convey a pressurized gas
stream between the two structures;
- an emergency disconnection coupler configured in the
gas conduit for establishing a selectively connectable and
disconnectable gas connection between the floating structure
and the other structure through the gas conduit, and wherein the
emergency disconnection coupler comprises an actuating
coupling that is selectively switchable between a locked
position and an unlocked position, whereby in said locked
position the gas connection is established and whereby in said
unlocked position the gas connection is interrupted whereby the
actuating coupling physically disengages when the actuating
coupling is in the unlocked position;
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- an emergency disconnect power assembly functionally
coupled to the actuating coupling to drive the switching of the
actuating coupling;
- a switching system arranged between the emergency
disconnect power assembly and the actuating coupling, wherein
the switching system is configured to control the switching of
the actuating coupling in the emergency disconnection coupler
between the locked position and the unlocked position, wherein
the switching system is adapted to be responsive to two distinct
fail-safe regimes contingent upon an internal gas pressure in the
gas connection:
a fail-unlocked regime when the internal gas pressure in
the gas connection is below a preselected override threshold
value, which sets the switching system to unlock the actuating
coupling upon power loss, and a fail-locked regime, which sets
the switching system to lock the actuating coupling when the
internal gas pressure in the gas connection is at or above the
preselected override threshold value,
the switching system comprising:
- a selection switch functionally coupled to the
actuating coupling to control switching of the
actuating coupling between said locked position and
unlocked position at least when the switching system
is in said fail-unlocked regime; and
- an override switch having an override position that is
activated by the internal gas pressure, and a release
position, wherein the override switch is forced in the
override position when the internal gas pressure is at
or above the preselected override threshold value, in
which case the pressure gate overrides the selection
switch whereby, regardless of whether the selection
switch is in open state or in closed state, the actuating
coupling is instructed to assume the locked position,
and wherein movement of the actuating coupling from
said locked position to said unlocked position can
only proceed when said internal gas pressure is below
said preselected override threshold value and the
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override switch is not activated, wherein the override
switch is part of a pressure gate that is driven by the
internal gas pressure within the gas connection.
Claims App. 2–3 (emphasis added).2
The Examiner’s Rejections
The rejections before us are:
1. claims 1, 3–13, and 16 under 35 U.S.C. §112(a) as lacking
adequate written description in the Specification (Final Act. 5); and
2. claims 1, 3–13, and 16 under 35 U.S.C. §112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter regarded as the invention (id. at 6).
DISCUSSION
Claim 1 recites “an emergency disconnect power assembly
functionally coupled to the actuating coupling to drive the switching of the
actuating coupling.” Claims App. 2. The Examiner construed “an
emergency disconnect power assembly” as a means-plus-function element
governed by 35 U.S.C. § 112(f), which provides:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
35 U.S.C. § 112(f); Final Act. 3–4.

2 “Claims App.” refers to the Claims Appendix, which was filed April 4,
2019, in response to a Notice of Defective Appeal Brief. “Appeal Br.” shall
refer to the Appeal Brief filed previously on February 20, 2019. Neither
document is paginated. Our reference to a page number of either document
is based on counting the pages from the first page.
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The Examiner acknowledged that the element lacks the word “means”
(or “step”), thus creating a rebuttable presumption that § 112(f) does not
apply. Final Act. 3; see also Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1348 (Fed. Cir. 2015) (en banc, holding that the presumption is not a
strong one, and overruling prior cases to the contrary). The Examiner,
however, determined the presumption was rebutted here because the claim
element “uses a generic placeholder ‘assembly’ coupled with functional
language ‘to drive the switching’ and ‘emergency disconnect’ without
reciting sufficient structure to achieve the function” and because “the
generic placeholder is not preceded by a structural modifier.” Final Act. 3.
The Examiner found that the corresponding structure described in the
Specification was “any [desired] suitable type” of an emergency disconnect
power assembly. Id. at 4 (quoting Spec. 18:13).
The Rejections—Written Description and Indefiniteness
When 35 U.S.C. § 112(f) applies, as it does here, the separate
requirements of adequate written description under § 112(a) and definiteness
under § 112(b) are closely entwined. The Federal Circuit has explained:
Although paragraph six [now subsection (f)] statutorily provides
that one may use means-plus-function language in a claim, one
is still subject to the requirement that a claim “particularly point
out and distinctly claim” the invention. Therefore, if one
employs means-plus-function language in a claim, one must set
forth in the specification an adequate disclosure showing what is
meant by that language. If an applicant fails to set forth an
adequate disclosure, the applicant has in effect failed to
particularly point out and distinctly claim the invention as
required by the second paragraph [now subsection (b)] of section
112.
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In re Donaldson Co., Inc., 16 F.3d 1189, 1195 (Fed. Cir. 1994); see also
Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir.
1999) (“[I]n order for a claim to meet the particularity requirement of ¶ 2,
the corresponding structure(s) of a means-plus-function limitation must be
disclosed in the written description in such a manner that one skilled in the
art will know and understand what structure corresponds to the means
limitation.”); MPEP § 2181(II)(A) (“Whether a claim reciting an element in
means- (or step-) plus-function language fails to comply with 35 U.S.C.
112(b) . . . because the specification does not disclose adequate structure (or
material or acts) for performing the recited function is closely related to the
question of whether the specification meets the description requirement in
35 U.S.C. 112(a).”).
Here, the Examiner indeed rejected the claims under both 35 U.S.C.
§ 112(a) and (b) based on the same failure of the Specification to describe
sufficient structure corresponding to the “emergency disconnect power
assembly” recited in claim 1. Final Act. 5–7.
Appellant argues that the “emergency disconnect power assembly”
should not be construed pursuant to 35 U.S.C. § 112(f). Appeal Br. 5.
Appellant’s argument is the following:
[T]he term [i.e., electrical disconnect power assembly] is not a
generic placeholder. There is structure that would be understood
by those skilled in the art. The emphasis of this term is “power”
and the term “electrical disconnect” is a descriptor of where this
power assembly is provided in the present invention. Appellant
respectfully submits that the term, which has a reference numeral
50, is sufficiently described in the specification and drawings to
enable any person skilled in the art to make and use the invention.
For example, the sentence bridging pages 17 and 18 reads: “The
emergency disconnect power assembly 50 is operatively
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connected to the engagement mechanism to power the
engagement mechanism to selectively switch the actuated
coupling part 20 from the locked position to the unlocked
position.” To require further structure to something that is
effectively a power supply in the complete context of the present
invention is unduly limiting.
Id. These arguments do not apprise us of error in the Examiner’s
determination that § 112(f) governs.
First, Appellant’s arguments primarily and erroneously focus on
whether the Specification describes the claim element at issue. But “[t]he
standard is whether the words of the claim are understood by persons of
ordinary skill in the art to have a sufficiently definite meaning as the name
for structure.” Williamson, 792 F.3d at 1349 (en banc, emphasis added); see
also id. at 1351 (“[W]e conclude that the ‘distributed learning control
module’ limitation fails to recite sufficiently definite structure and that the
presumption against means-plus-function claiming is rebutted.”).
Second, the words of the claim on which Appellant does rely, i.e.,
“power” and “electrical disconnect” do not impart any structure into the term
“assembly.” Cf. Williamson, 792 F.3d at 1351 (“The prefix ‘distributed
learning control’ does not impart structure into the term ‘module.’ These
words do not describe a sufficiently definite structure.”).
We determine, as did the Examiner, that § 112(f) governs the
construction of “emergency disconnect power assembly.” Thus, the issue
becomes whether the Specification discloses sufficient structure
corresponding to that limitation. See id. (“Having found that the ‘distributed
learning control module’ is subject to application of § 112, para. 6, we next
determine whether the specification discloses sufficient structure that
corresponds to the claimed function.”). We have already discussed the
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Examiner’s findings in this regard, as discussed above. Appellant’s
arguments to the contrary are as follows:
Appellant respectfully submits that the term, which has a
reference numeral 50, is sufficiently described in the
specification and drawings to enable any person skilled in the art
to make and use the invention. For example, the sentence
bridging pages 17 and 18 reads: “The emergency disconnect
power assembly 50 is operatively connected to the engagement
mechanism to power the engagement mechanism to selectively
switch the actuated coupling part 20 from the locked position to
the unlocked position.” To require further structure to what is
effectively a power supply in the complete context of the present
invention is unduly limiting.
Appeal Br. 5.
These arguments do not apprise us of Examiner error. The drawings
show “emergency disconnect power assembly 50” as a mere black box.
Spec. Fig. 1 (ref. 50). And the portion of the Specification that Appellant
quotes and italicizes does not describe sufficient structure for the limitation.
It describes what the emergency disconnect power assembly is operably
connected to and what the assembly does. But it does not disclose what the
assembly is.
Because the Specification fails to disclose sufficient structure
corresponding to the means-plus-function limitation “emergency disconnect
power assembly,” the claim lacks adequate written description and is
indefinite. The same is true of all other pending claims, which ultimately
depend from claim 1. See 35 U.S.C. § 112(d) (“A claim in dependent form
shall be construed to incorporate by reference all the limitations of the claim
to which it refers.”).
For the foregoing reasons, we affirm the Examiner’s rejections of
claims 1, 3–13, and 16, under both 35 U.S.C. §112(a) and (b).
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SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 3–13, 16 112(a) Written
Description
1, 3–13, 16
1, 3–13, 16 112(b) Indefiniteness 1, 3–13, 16
Overall
Outcome
1, 3–13, 16

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