Ex Parte Harrick

Patent Trial and Appeal BoardJul 10, 2015

12589134 (P.T.A.B. Jul. 10, 2015)

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. 12/589,134 10/19/2009 Bruce William Harrick PGS-09-05US-NP 5448 95738 7590 07/13/2015 Petroleum Geo-Services, Inc. P.O. Box 42805 Houston, TX 77242-2805 EXAMINER BREIER, KRYSTINE E ART UNIT PAPER NUMBER 3645 MAIL DATE DELIVERY MODE 07/13/2015 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 BRUCE WILLIAM HARRICK ____________ Appeal 2013-007893 Application 12/589,1341 Technology Center 3600 ____________ Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bruce William Harrick (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting under 35 U.S.C. § 103(a) claims 1–16 as unpatentable over Iranpour (US 7,974,151 B2, issued July 5, 2011) and Stroud (US 2007/0256623 A1, published Nov. 8, 2007). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 According to Appellant, the real party in interest is PGS Geophysical AS. Appeal Br. 2 (filed February 25, 2013). Appeal 2013-007893 Application 12/589,134 2 SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention relates to “a system and a method for protecting towed marine seismic equipment from shark bite.” Spec. ¶ 10. Claims 1 and 9 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A system for protecting towed marine seismic equipment from shark bite, comprising: marine seismic equipment adapted for towing through a body of water; and an electropositive metal attached to the marine seismic equipment to repel sharks from the marine seismic equipment. ANALYSIS Appellant presents the same arguments with respect to the rejection of independent claims 1 and 9 under 35 U.S.C. § 103(a) as unpatentable over Iranpour and Stroud. See Appeal Br. 7–11. As such, the following analysis applies equally to both independent claims. The Examiner finds that Iranpour discloses a towed marine seismic array, but fails to disclose “an electropositive metal attached to the marine seismic equipment.” Final Act. 4 (mailed Sept. 26, 2012). Nonetheless, the Examiner finds that Stroud discloses “electropositive metal attached to marine equipment for shark deterrent.” Id. (citing Stroud, ¶¶ 9 and 12). The Examiner concludes that it would have been obvious for a person of ordinary skill in the art to modify Iranpour’s marine seismic array to include Appeal 2013-007893 Application 12/589,134 3 an electropositive metal, as taught by Stroud, attached to the marine equipment, in order to “reduce[] possible damage to the equipment.” Id.; see also Ans. 3–4. Appellant argues that there is no motivation or suggestion to combine Iranpour and Stroud. See Appeal Br. 7–10. Appellant’s position is that “one of ordinary skill in the art would not have been motivated to modify Iranpour to include Stroud’s electropositive metals as a solution for shark’s biting seismic equipment, especially considering that neither Iranpour nor Stroud disclose[s] or suggest[s] that shark’s biting seismic equipment is even a problem.” Id. at 9; see also Reply Br. 3. Appellant also argues that there is no reasonable expectation of success. Id. at 10. Specifically, Appellant contends that “there is no evidence that one of ordinary skill in the art would reasonable [sic] expect that the electropositive metals would even protect the towed seismic equipment of Iranpour from shark bite, as Stroud is directed to repelling sharks from food sources and not from protecting inanimate objects, such as towed seismic equipment.” Id. Appellant has not provided persuasive evidence or technical reasoning sufficient to show that the proposed modification would have been more than a predictable use of the prior art elements according to their established functions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In this case, Stroud discloses that it was known in the art to use an electropositive metal for shark deterrent. Stroud, ¶¶ 9 and 12. Contrary to Appellant’s assertion that Stroud’s disclosure is limited to protecting food sources, Stroud also discloses that electropositive materials are useful in preventing damage by elasmobranchs (e.g., sharks) to equipment as well. Id. at ¶ 84. The Examiner’s modification is merely an improvement to Appeal 2013-007893 Application 12/589,134 4 Iranpour’s towed marine seismic array by including an electropositive metal in the same way as taught by Stroud, to lead to the predictable result of reducing possible damage to the equipment. See Final Act. 4; see also Ans. 4. Appellant also argues that because neither Iranpour nor Stroud discloses or suggests that sharks are attracted to inedible compounds, the Examiner’s rejection is based on improper hindsight reconstruction. Appeal Br. 10–11. We are not persuaded by Appellant’s argument because the Examiner’s reasoning, namely, “to avoid damage and disruption to the survey whenever possible due to the aforementioned cost of said survey equipment,” is based on Stroud’s desire to prevent sharks from striking a variety of equipment used in a marine application. See Ans. 4–5; see also Stroud, ¶ 84. Moreover, Appellant has not shown error in the Examiner’s reasoning. Appellant further argues that Stroud is non-analogous art with respect to the present invention because the invention is directed to protecting towed seismic equipment, whereas Stroud is focused on protecting humans. Appeal Br. 11. Thus, Appellant’s position is that Stroud is in a different field of endeavor from Appellant’s invention and would not have been considered by one skilled in the art working on the particular problem with which the invention pertains. Id. To determine what is analogous prior art for the purpose of analyzing the obviousness of the subject matter at issue, a reference in a field different from that of Appellant’s endeavor may be reasonably pertinent if it is one that, “because of the matter with which it deals, [would have logically] commended itself to an inventor’s attention in considering his [or her Appeal 2013-007893 Application 12/589,134 5 invention as a whole].” In re ICONHealth and Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007) (citation omitted). In this case, the problem Appellant confronts is “protecting towed seismic equipment from shark bite.” Spec. ¶ 10. Appellant explains that sharks bite the equipment thinking that the equipment might be a food source. Id. ¶ 18. In order to address this problem, Appellant attaches an electropositive metal to the equipment. Id. ¶¶ 10 and 19. Stroud discloses electropositive metals for repelling elasmobranches and methods of using electropositive metals to repel elasmobranches. Stroud, ¶ 1. Stroud discloses using electropositive metals not only to protect food sources from sharks, but also, like Appellant, to protect inedible objects from shark damage. Id. ¶ 84. As such, Stroud would logically have commended itself to an inventor considering the problem of repelling sharks from marine seismic equipment. See Ans. 6. For the foregoing reasons, we sustain the rejection of independent claims 1 and 9 under 35 U.S.C. § 103(a) as unpatentable over Iranpour and Stroud. Appellant relies on the arguments discussed supra with respect to the rejection of dependent claims 2–8 and 10–16. See Appeal Br. 7–11. Accordingly, for the same reasons, we likewise sustain the rejection of claims 2–8 and 10–16 under 35 U.S.C. § 103(a) as unpatentable over Iranpour and Stroud. SUMMARY We AFFIRM the Examiner’s decision to reject claims 1–16. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2013-007893 Application 12/589,134 6 AFFIRMED JRG