Braud, Jean et al.

Patent Trials and Appeals Board

Feb 26, 2020

12993642 - (D) (P.T.A.B. Feb. 26, 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.
12/993,642 11/19/2010 Jean Braud 2001-1850 7469
466 7590 02/26/2020
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
EXAMINER
WIEST, ANTHONY D
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
DocketingDept@young-thompson.com
yandtpair@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEAN BRAUD, JEAN-PIERRE BENOIT, CECILE MELIS, and
CHRISTIAN BAUDUIN

Appeal 2018-006450
Application 12/993,642
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “the
assignee, Single Buoy Moorings Inc., of Marly, Switzerland.” Appeal Br. 1.
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Application 12/993,642

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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 9, and 14 are the independent claims on appeal. Claim 14,
reproduced below, is illustrative of the claimed subject matter.
14. A mooring buoy having a body defining a central
passageway (44), a cable (17) that extends through the
passageway (44) to a weight (16) that is suspended from the
cable (17), the mooring buoy carrying mooring lines (10) that
are connected to a sea bed (19), the mooring buoy (11) further
carrying at least twenty risers (12), the buoy being movable
relative to the cable (17) in a length direction of the cable,
wherein the weight (16) is located on the cable at or below the
buoy, a stopper (21) being provided on the cable for engaging
with the buoy and for blocking relative movement of the buoy
and the cable, the stopper being fixed to the cable near an upper
or a lower end of the buoy, wherein the relative weights and
buoyancies of the cable (17), weight (16), the body of buoy
(11), the mooring lines (10) and risers (12) are such that the
stopper (21) engages with the body of buoy (11) and exerts a
force on the buoy in a downward direction when no lifting force
is exerted on the cable (17), whereas the buoy (11) moves
upwardly via its own buoyancy when the cable (17) and weight
(16) are lifted by a lifting device of a vessel.
Appeal Br. 11–12, Claims App.

Rejections2
Claims 1–8 and 11–13 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.3

2 The Examiner withdraws rejections under 35 U.S.C. § 112, first paragraph,
and second paragraph. Ans. 3–4.
3 The Examiner rejects claims 1–19 under 35 U.S.C. § 112 and determines
that “[c]laim 1 is directed towards [n]ew [m]atter.” Final Act. 2; see Ans. 4.
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Application 12/993,642

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Claims 9, 10, and 14–19 are rejected on the ground of nonstatutory
double patenting as unpatentable over claims 1–18 of Braud et al.
(US 8,397,655 B2, iss. Mar. 19, 2013) (hereinafter “’655 Patent”) in view of
Boatman et al. (US 5,823,131, iss. Oct. 20, 1998) (hereinafter “Boatman”).
Claims 9, 10, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Børseth (US 5,651,708, iss. July 29, 1997) in view of
Boatman.
Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Børseth in view of Boatman and Isnard et al. (US 5,941,746, iss. Aug. 24,
1999) (hereinafter “Isnard”).

ANALYSIS
Written Description
The Examiner rejects claim 1 as failing to comply with the written
description requirement. See Final Act. 2. The Examiner determines that
the Specification fails to disclose, and therefore support, “the lifting device
. . . having a capacity insufficient to lift the mooring buoy and its attached
mooring lines.” See id.; Ans. 4–5 (citing Spec. 11:11–14, 12:23–25). The

The Appellant argues that specific passages in the Specification “provide
ample written description support for the relationship recited by the
concluding lines of claim 1.” Reply Br. 2. Accordingly, the Appellant
correctly understands the basis for the rejection is a failure to comply with
the written description requirement. Further, we note that the Examiner
maintains the rejection of claims 9, 10, and 14–19 under this ground
(Ans. 4), which appears to be a minor oversight. As the Appellant correctly
points out, the rejection does not apply to claims 9, 10, and 14–19 because
these claims do not depend from claim 1 or contain the language in question.
Appeal Br. 3; Reply Br. 1.
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Appellant correctly understands this rejection as concerning claim 1’s
recitation that “the lifting device is of a capacity sufficient to lift the weight
(16) and cable (17) but insufficient to lift the mooring buoy (11) with its
attached mooring lines (10) and risers (12).” Appeal Br. 2.
The Appellant cites the Specification at page 2, lines 5–8, page 4,
lines 26–28, page 8, lines 8–11 and 15–17, page 15, lines 28–33, and
page 16, lines 18–22 and argues that when the passages are considered
together, the Specification provides ample written description support for the
disputed recitation of claim 1. See id. at 2–3; Reply Br. 1–2. The Appellant
submits that the Specification “teaches that conventional winches do not
have sufficient capacity to lift large buoys with large connected weights, yet
the mooring system of the invention allows just such a buoy to be connected
to a vessel using just such a winch.” Appeal Br. 3 (italics added). The
Appellant’s argument is not persuasive of Examiner error.
Of the portions of the Specification cited by the Appellant, the portion
at page 2, lines 5–8, stands out among the others. This portion of the
Specification, which is part of the Background of the Invention section,
describes, “[a]lso hook-up of both the riser buoy and the weight together is
only possible for relatively small buoys and weights and not for large buoys
with large connected weights, as this would require a winch capacity that is
larger than the capacity of presently available winches.” Spec. 2:5–8
(italics added). This portion of the Specification instructs one of ordinary
skill in the art that at the time the present application was filed winches
lacked the capacity to hook-up large buoys with large connected weights.
Claim 1, however, is directed to a “lifting device,” which is not necessarily a
winch. The difference in terminology is noteworthy because the
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Specification does not discuss the lifting capacity of the “lifting device.”
Also, we note that claim 1 does not necessarily require that the “mooring
buoy” is “large.” For the purposes of this appeal only, even if we were to
assume that the claimed “mooring buoy” was “large,” claim 1 only requires
the “mooring buoy” be attached to “weights,” and not “large” weights. In
view of the foregoing, we determine that the differences in terminology
between claim 1 and the Specification is significant. See Ans. 4 (the
Examiner identifies relative terms in the Specification, such as “large
buoys,” “large connected weights,” “modest size winches,” etc., being
distinct from the invention as currently claimed).
Additionally, we agree with the Examiner that claim 1 recites a
negative limitation (Ans. 4), i.e., “the lifting device is of a capacity . . .
insufficient to lift the mooring buoy (11) with its attached mooring lines (10)
and risers (12).” Here, the claim focuses on the lifting device’s lack of
capacity to lift the mooring buoy 11 with its attached mooring lines 10 and
risers 12. The focus of the Specification’s disclosure is primarily on a
mooring buoy that does not need to be lifted by a winch. See Final Act. 2.
A lifting device that does not need to lift mooring buoy 11, with its attached
mooring lines 10 and risers 12, is distinct from a lifting device that lacks the
capacity to do so. See id.
As for the remaining portions of the Specification cited by the
Appellant, for similar reasons as those discussed above, we are not
persuaded that the Specification supports the negative claim limitation of
claim 1. Accordingly, we determine that the Specification fails to convey
with reasonable clarity to those skilled in the art that, as of the filing date
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sought, applicant was in possession of the invention as now claimed. See,
e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).
Thus, we sustain the Examiner’s rejection of independent claim 1 and
claims 2–8 and 11–13, which depend therefrom.

Nonstatutory Double Patenting, ’655 Patent in view of Boatman
Independent claim 14 recites, “buoy (11) moves upwardly via its own
buoyancy when the cable (17) and weight (16) are lifted by a lifting device
of a vessel.” Appeal Br. 12, Claims App. Independent claim 9 includes a
similar recitation. Id. at 10–11.
The Examiner finds ’655 Patent fails to teach, but Boatman teaches,
the foregoing recitation of claim 14, and the similar recitation of
independent claim 9. See Final Act. 5 (citing Boatman Figs. 6, 7). The
Appellant disputes this finding primarily on the basis that Boatman
describes, “the buoy 36 moves upwardly only after it is contacted by the
weight 58.” Appeal Br. 6 (citing Boatman col. 4, ll. 43–46).
The Examiner supports the finding that Boatman discloses the
disputed recitations of claims 9 and 14 by pointing to Figures 6 and 7 and
deducing that Boatman’s buoy “ha[s] sufficient buoyancy to rise on its own
as the weight 58 is lifted by the winch.” Final Act. 5. The Examiner finds:
Figure 7 shows weight 58 resting on sea bed/floor 14 with buoy 36
suspended above weight 58 due to its buoyancy, and prevented from rising
further due to stopper 64; and Figure 6 shows weight 58 and anchor chain 44
being lowered while stopper 64 is in contact with the upper surface of buoy
36. See id.; see also Boatman col. 3, ll. 10–21.
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Boatman describes what occurs during docking, “[f]or docking riser
buoy 36, retrieval line 60 is pulled upwardly over pulley 61 by winch 62
along with weight 58 and anchor chain 44 until weight 58 contacts buoy 36.
Then, buoy 36 and weight 58 move upwardly together.” Boatman col. 4,
ll. 43–46 (italics added). As described, the buoy is lifted by the lifting
device and is not lifted by its own buoyancy. The Specification, in the
Background of the Invention section, supports this notion by describing
Boatman’s invention. See, e.g., Spec. 1:17 – 2:5. The Specification states,
among other things, “[a]nother aspect of the known riser buoy is that in
order to dock this riser buoy, a retrieval line is pulled upwardly via a winch
until the weight contacts the buoy.” Id. at 1:30–32. However, the Examiner
explains that the disclosure in Boatman’s column 4, lines 43–46 is specific
to docking, i.e., “the final stage of raising and connecting the buoy within
the turret.” Ans. 6–7.
The Specification also describes with regard to Boatman, “[f]urther as
the mooring legs are directly connected to the turret, the riser buoy has only
sufficient buoyancy to support the risers.” Spec. 1:28–30 (emphasis added);
see Boatman Fig. 7. Here, the Specification does not suggest that buoy 36,
which is connected to risers 19, would be able to move upwardly via its own
buoyancy when the cable and weight are lifted by a lifting device of a vessel.
As for Boatman’s Figure 6, this figure shows buoy 36 being lowered
from turret 20 toward sea bed/floor 14. Boatman col. 3, ll. 10–16. Figure 6
shows how stopper 64 via weight 58 applies a downward force on buoy 36
when winch 62 lowers weight 58. Figure 6 does not necessarily show the
effect of buoy 36’s buoyancy on the buoy relative to weight 58 and anchor
chain 44 when weight 58 and anchor chain 44 are being lifted by winch 62
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but before weight 58 contacts buoy 36 during docking. See id. at Fig. 3.
The Examiner’s contrary position appears to be based on speculation. See,
e.g., Ans. 6–7.
Further, the Examiner appears to rely on the Appellant’s disclosure of
their invention to support the finding that Boatman teaches the disputed
limitation of claims 9 and 14. See id. at 7. However, it is speculative to
assume that because the Appellant’s invention works in a particular manner
that Boatman’s device works in that same manner.
We determine that the Examiner fails to adequately support the
finding that Boatman teaches “buoy (11) moves upwardly via its own
buoyancy when the cable (17) and weight (16) are lifted by a lifting device
of a vessel,” as recited in claim 14, and the similar recitation of independent
claim 9.
Thus, we do not sustain the Examiner’s rejection of independent
claim 9 and claim 10, which depend therefrom, and independent claim 14
and claims 15–19, which depend therefrom.

Børseth in view of Boatman
The Examiner’s rejection of independent claims 9 and 14 based on
Børseth in view of Boatman includes the same inadequately supported
finding based on Boatman as discussed above. Final Act. 6–7. The
Examiner fails to rely on Børseth in any manner that would remedy the
deficiency. Thus, we do not sustain the Examiner’s rejection of claims 9,
10, 14, and 15.

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Børseth in view of Boatman and Isnard
The Examiner’s rejection of claim 19, which depends from claim 14,
based on Børseth in view of Boatman and Isnard, relies on the same
inadequately-supported finding based on Boatman as discussed above. See
Final Act. 9. The Examiner fails to rely on Isnard in any manner that would
remedy the deficiency. Thus, we do not sustain the Examiner’s rejection of
claim 19.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 11–13 112, first
paragraph
Written Description 1–8, 11–13

9, 10, 14–19 ’655 Patent, Boatman 9, 10, 14–
19
9, 10, 14, 15 103(a) Børseth, Boatman 9, 10, 14,
15
19 103(a) Børseth, Boatman,
Isnard
19
Overall
Outcome
1–8, 11–13 9, 10, 14–
19

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 IN PART