Ex Parte Haney et al

Patent Trial and Appeal BoardNov 26, 2012

11702349 (P.T.A.B. Nov. 26, 2012)

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. 11/702,349 02/05/2007 James Allan Haney 6251 8214 41177 7590 11/27/2012 J. RAY MCDERMOTT, S.A. PATENT DEPARTMENT 757 NORTH ELDRIDGE PARKWAY HOUSTON, TX 77079 EXAMINER OLSON, LARS A ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 11/27/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JAMES ALLAN HANEY and CHENG-YO CHEN ____________________ Appeal 2010-011008 Application 11/702,349 Technology Center 3600 ____________________ Before: GAY ANN SPAHN, BRETT C. MARTIN, and RICHARD E. RICE, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011008 Application 11/702,349 2 STATEMENT OF CASE James Allan Haney and Cheng-Yo Chen (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-12 and 14-16. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellants’ invention is directed generally “to the reduction of vortex induced vibrations or motions in a structure due to fluid flow around the structure and more particularly to the reduction of such vibration or motions through the use of strakes on the structure.” Spec., para. [0001]. Claims 1 and 14, reproduced below, are illustrative of the claimed subject matter on appeal: 1. On a structure subject to fluid flow that results in vortex induced vibrations or motions and having at least one strake that extends radially from and extends in a spiral pattern around the structure, an improved strake, said improved strake comprising a streamliner and stiffener attached to the end of the strake distant from the structure that increases reduction of vortex induced vibrations or motions by affecting translational water flow. 14. A tension resisting support for a spiral strake on a cylindrical structure, comprising a rigid block attached to each end of the strake and the cylindrical structure, such that distortions of the strake normal to the surface of the strake stretch the strake against the tension resisting support, thereby inducing tension in the strake in the spiral direction. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Appeal 2010-011008 Application 11/702,349 3 Egolf Richter Horton US 6,260,809 B1 US 6,575,665 B2 US 6,953,308 B1 Jul. 17, 2001 Jun. 10, 2003 Oct. 11, 2005 REJECTIONS The Examiner made the following rejections, which are under appeal: Claim 16 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 3. Claim 1-12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Richter in view of Egolf. Ans. 3. Claim 14-16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Horton. Ans. 4. ANALYSIS Rejection under 35 U.S.C. § 112, 2nd Paragraph The Examiner rejects claim 16 as indefinite due to lack of antecedent basis for inclusion of the term “the tip” in claim 16 essentially because there is no first recitation of “a tip.” The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). See also In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970) (“the essence of [the] requirement [under 35 U.S.C. § 112, second paragraph,] is that the language of the claims must make it clear what subject matter they encompass.”) We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be Appeal 2010-011008 Application 11/702,349 4 interpreted by one of ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As indicated by Appellants, one of ordinary skill in the art would understand from paragraphs [0021] and [0023] of the Specification in combination with Figures 6 and 7 that the tip of the strake is at the “free edge.” In this instance, we conclude that one of ordinary skill in the art would understand that “the tip” in claim 16 refers to the portion of the strake distant from the structure in a similar fashion as “the end” recited in claim 1. Thus, within the context of claim 16, it is clear what is meant by the term “the tip” to one of ordinary skill in the art. Accordingly, we do not sustain the rejection of claim 16 as indefinite. Rejection of Claims 1-12 as Unpatentable over Richter and Egolf Regarding claim 1, Appellants argue that the “functionality of helical strakes in the present invention is to disrupt the lengthwise coherence of vortices shed from a cylindrical object,” while “Egolf only teaches the use of a structure at the tip of a wing blade.” App. Br. 4-5. Although this may be true, Appellants’ argument amounts to attacking the Egolf reference individually rather than addressing the Examiner’s combination of the Richter and Egolf references. “[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of [those] references would have suggested to those of ordinary skill in the art.” Id. at 425. Appeal 2010-011008 Application 11/702,349 5 As the Examiner finds, Egolf recognizes that tip structures 16, 20 disrupt vortices created at the tip region of foil or blade 12. See Ans. 4 (citing Egolf, col. 3, l. 51 – col. 4, l. 2, figs. 1A-4); see also Egolf, col. 3, ll. 16-19. In the instant invention, although the tip structure is utilized over the length of the strake, the principle of vortex reduction being employed is the same as that taught by Egolf in that vortices are created at the tip region. See Ans. 6. It does not seem to us to be beyond the ability of one of ordinary skill in the art to adapt Egolf’s teaching of structures for vortex reduction to the specific application of a strake as the Examiner has suggested. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (an artisan must be presumed to know something about the art apart from what the references disclose). Regarding the recitation of the structure also being a “stiffener,” we further agree with the Examiner that Egolf’s tip structure “functions as a stiffening member by increasing the overall thickness of the end of the blade to which said tip is attached.” Ans. 6. Accordingly, we sustain the rejection of claim 1. As to claims 2 and 3, Appellants argue that the stiffener/streamliner needs to be “along the full length of the strake,” but do not state how this is not met by the combination of Richter and Egolf. As shown in Egolf, the tip structure runs along the entire width of the blade. See, e.g., Egolf, Fig. 4. Therefore, the combination of Egolf with Richter would suggest utilizing such structure along the entire edge where such vortices are created as recited in claim 2. Likewise, if the structure is along the entire edge, it must also be along a portion as recited in claim 3. As such, we sustain the rejection of claims 2 and 3. Regarding claims 4-6, Appellants merely state that the “required shape of the streamliner and stiffener may depend upon the water and Appeal 2010-011008 Application 11/702,349 6 current conditions as well as the size of the structure and the strake on the structure” (App. Br. 4-5), but do not state how the combination is deficient. Further, Appellants’ argument is not commensurate with the scope of the claim, which does not recite anything about stiffener/streamliner shape being dependent upon water/current conditions, the size of the structure, and the strake on the structure. App. Br. 5-6. The Examiner finds that the “streamliner and stiffener [of Egolf] has a teardrop or partially circular shape, as shown in Figure 3B.” Ans. 4. This finding addresses the limitations actually recited in claims 4-6 of an “enlarged tip,” “circular shape,” and “tear drop shape,” respectively. Accordingly, we sustain the rejections of claims 4-6. Regarding claims 7 and 10, Appellants state that these claims are merely a combination of features of claims 1 and 4 and claims 1 and 6, respectively. App. Br. 6. Accordingly, because we sustain the Examiner’s rejection of claims 1, 4, and 6 for the reasons discussed supra, we also sustain the rejection of claims 7 and 10 for the same reasons. Appellants provide no separate arguments with respect to claims 8, 9, 11, and 12 other than those provided with respect to claims 2 and 3. App. Br. 6. As such, we sustain the rejection of claims 8, 9, 11, and 12 for the reasons stated above with respect to claims 2 and 3. Rejection of Claims 14-16 as Unpatentable over Horton Each of claims 14-16 requires “a rigid block attached to each end of the strake” that induces “tension in the strake in the spiral direction.” App. Br. 11-12. The Examiner finds that gussets or stiffener plates 28 of Horton amount to “a tension resisting support that is further comprised of a rigid block.” Ans. 4-5. In Horton, there are two types of blocks (gussets or stiffener plates 28): a first type of block (gusset or stiffener plate 28 around Appeal 2010-011008 Application 11/702,349 7 knee brace 24) that stiffens knee brace 24 against hull 104 and a second type (gusset or stiffener plate 28 adjacent stanchion 14) that stiffens stanchion 14 against hull 104. See Horton, Figs. 5-6. We note that the first type of block is not actually attached to strake segment 12 of strake 10 except via knee brace 24, and the second type of block is not located at the end of segment 20 of the strake 10 as claimed, but is actually placed inwardly of the ends of strake segment 20. Id. It is not entirely clear to which block (gusset or stiffener plate 28), i.e., the first type or the second type, the Examiner refers, but neither appears to meet the entirety of the language of claims 14-16. Further, as Appellants point out, Horton’s “knee braces cannot develop tension in the spiral direction” as claimed. App. Br. 7. See also App. Br. 6-8. In neither the rejection nor the response to argument as provided in the Answer does the Examiner make any finding that Horton achieves the claimed “inducing tension in the strake in the spiral direction.” As such, we cannot sustain the Examiner’s rejection of claims 14-16. DECISION For the above reasons, we REVERSE the indefiniteness rejection of claim 16 and the rejection of claims 14-16 as unpatentable over Horton. We AFFIRM the Examiner’s decision to reject claims 1-12 as unpatentable over Richter and Egolf. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Appeal 2010-011008 Application 11/702,349 8 hh