Ex Parte Elboth

Patent Trial and Appeal BoardDec 18, 2017

13171195 (P.T.A.B. Dec. 18, 2017)

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. 13/171,195 06/28/2011 Thomas ELBOTH 0336-424/99974 5116 11171 7590 12/20/2017 Patent Portfolio Builders, PLLC P.O. Box 7999 Fredericksburg, VA 22404 EXAMINER NDURE, AMIE MERCEDES ART UNIT PAPER NUMBER 3645 NOTIFICATION DATE DELIVERY MODE 12/20/2017 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): Mailroom@ppblaw.com eofficeaction @ appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS ELBOTH1 Appeal 2016-006077 Application 13/171,195 Technology Center 3600 Before DANIEL S. SONG, GEORGE R. HOSKINS, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant’s Brief lists CGG DATA SERVICES AG as the real party in interest. Br. 2. Appeal 2016-006077 Application 13/171,195 CLAIMED SUBJECT MATTER The claims are directed to a “marine seismic streamer cable and a method for noise reduction in the frequency range below 20 Hz in connection with marine seismic data acquisition.” Spec. ^ 1. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A flexible streamer cable for use in marine seismic exploration, the cable comprising: sensor elements dispersed along the length of the cable, wherein the surface of the cable, at least in the areas surrounding the sensor elements, is coated by a highly hydrophobic material, and wherein the surface of the cable coated by the highly hydrophobic material provides low noise in the frequency domain below 20 Hz by modifying a turbulent boundary layer around the cable. Br. 17 (Claims App.). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Marschall Birger US 6,580,661 B1 June 17, 2003 US 2006/0257643 A1 Nov. 16, 2006 US 2008/0253226 A1 Oct. 16, 2008 US 2013/0170322 A1 July 4, 2013 WO 2010/042191 A1 April 15, 2010 Tenghamn Hartshome Bleecher 2 Appeal 2016-006077 Application 13/171,195 Henoch, C. et al., “Turbulent Drag Reduction Using Superhydrophobic Surfaces,” American Institute of Aeronautics and Astronautics (June 2006) (hereinafter, “Krupenkin”)2 REJECTIONS (I) Claims 1-7, 11, 12, and 16-18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hartshome, Tenghamn, Bleecher, and Krupenkin. (II) Claims 8-10, 13-15, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hartshome, Tenghamn, Bleecher, Kmpenkin, and Birger. (III) Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Hartshome, Tenghamn, Bleecher, Kmpenkin, and Marschall. OPINION Rejection (I) Claims 1—7, 11, and 12 The Examiner finds that Hartshome teaches a flexible streamer for marine seismic exploration, but that this reference fails to teach the limitation of claim 1 presented in italics above. Final Act. 3-4. The Examiner makes the same finding in the rejection of independent claim 5. Id. Addressing this deficiency in Hartshome, the Examiner finds that Tenghamn “provides low noise in the frequency domain below 20[ ]Hz by modifying a turbulent boundary layer around the cable.” Id. at 4 (citing Tenghamn 35-36). The Examiner reasons that it would have been 2 Although the first named author of this article is Henoch, C., the Examiner refers to this prior art as “Kmpenkin,” the second named author. See, e.g., Final Act. 3. We maintain the Examiner’s nomenclature. 3 Appeal 2016-006077 Application 13/171,195 obvious to modify the cable of Hartshome to provide “a low noise in the frequency domain below 20 [ ]Hz as motivated by Tenghamn by modifying a turbulent boundary layer around the cable for the purpose of processing seismic data while utilizing streamer cables that will eliminate resonance.”3 Id. The Examiner also determines that the limitation presented in italics in claim 1 above is a statement of intended use or desired outcome because it “occurs only when the streamer cable is towed,” and, therefore, carries no patentable weight. Final Act. 6, 13; see also Ans. 5. Appellant contends that Tenghamn does not teach reducing noise affecting a streamer cable in the frequency domain below 20 Hz by coating it with a highly hydrophobic material. Br. 7. Instead, Appellant asserts, Tenghamn improves data collection by providing a geophone with a resonant frequency of, or higher than, 20 Hz, and filtering out signals below 20 Hz. See Br. 7-8. We disagree with the Examiner’s determination that the recitation relating to providing low noise by modifying a turbulent boundary layer in claim 1 carries no patentable weight. Even assuming arguendo that the function recited in claim 1 occurs only when the streamer cable is towed, functional language may be used to define the structure required by the claim. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with [defining something by what it does rather than what it is] in drafting patent claims.”). In the case of the rejection of claims 1 and 5, the prior art structure must still be capable of functioning as recited. 3 In the Answer, the Examiner clarifies that the word “resonance” should have been “turbulence” in this sentence. See Ans. 5. 4 Appeal 2016-006077 Application 13/171,195 We also disagree with the Examiner’s finding (Final Act. 4) that Tenghamn discloses structure that performs the recited function. Paragraphs 35 and 36 of Tenghamn, cited by the Examiner, describe the benefits of a geophone having a high resonant frequency and do not relate to providing highly hydrophobic material covering on a cable, much less the effect that doing so would have on noise in the frequency domain below 20 Hz. See Tenghamn 35-36. Accordingly, the Examiner’s findings of fact with respect to Tenghamn are not supported by a preponderance of the evidence. As a consequence, the Examiner’s reasoning for modifying Hartshome, based on the teachings in Tenghamn, whether to “eliminate resonance” (Final Act. 4) or to “eliminate ‘turbulence’” (Ans. 5), is not supported by rational underpinnings. Therefore, we do not sustain the Examiner’s rejection of independent claims 1 and 5 and associated dependent claims 2- 4, 6, 7, 11, and 12 as unpatentable over Hartshome, Tenghamn, Bleecher, and Kmpenkin. Claims 16—18 Independent claim 16, like claims 1 and 5, recites, “wherein the surface of the cable coated by the highly hydrophobic material produces low noise in the frequency domain below 20 Hz.” Br. 20 (Claims App.). For the same reasons discussed above with respect to claims 1 and 5, we do not sustain the Examiner’s rejection of claim 16 and claims 17 and 18 depending therefrom as unpatentable over Hartshome, Tenghamn, Bleecher, and Kmpenkin. Rejections (II) and (III) The Examiner’s use of Birger and Marschall does not remedy the deficiency discussed above regarding Rejection (I). See Final Act. 8-11. In 5 Appeal 2016-006077 Application 13/171,195 particular, in connection with claim 20, the Examiner cites Marschall as “teaching] the low noise occurs by modifying a turbulent boundary layer around the cable.” Id. at 11 (citing Marschall, 2:50-65). The pertinent Marschall disclosure states: “A majority of the combined length of the two transducers is preferably positioned forward of the middle of each [hydrodynamic] housing to minimise noise from turbulent boundary layer flow.” Marschall, 2:54-57 (emphases added). That disclosure appears to concern reducing noise resulting from turbulent flow by appropriate shaping of the cable, rather than by coating the cable as recited in claim 16, from which claim 20 depends. Therefore, we do not sustain Rejections (11) and (111). DECISION The Examiner’s decision to reject claims 1-19 is reversed. REVERSED 6