Ex Parte LauDownload PDFPatent Trial and Appeal BoardMar 16, 201713881604 (P.T.A.B. Mar. 16, 2017) Copy Citation 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. 13/881,604 04/25/2013 Hon Chung Lau TH4054-US 5803 23632 7590 03/20/2017 SHF! T OH miUPANY EXAMINER P O BOX 2463 BUCK, MATTHEW R HOUSTON, TX 77252-2463 ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 03/20/2017 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): USPatents@Shell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HON CHUNG LAU1 Appeal 2015-006185 Application 13/881,604 Technology Center 3600 Before STEVEN D.A. McCARTHY, LISA M. GUIJT, and NATHAN A. ENGELS, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1—10. No other claims are pending. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies Shell Oil Company as the real party in interest. Br. 2. Appeal 2015-006185 Application 13/881,604 ILLUSTRATIVE CLAIM Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An offshore production system, comprising: a structure in a body of water, having a portion extending above a surface of the body of water; a surface wellhead located at a top of the body of water; a first wellhead located at a bottom of the body of water; a second wellhead located at the bottom of the body of water; a first riser extending from the first wellhead to the surface wellhead, wherein the first riser is configured to connect with a single subsea wellhead; and a second riser extending from the second wellhead to the surface wellhead, wherein the second riser is configured to connect with a single subsea wellhead. THE REJECTION Claims 1—10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of Fitzgerald et al. (US 2001/0013414 Al; Aug. 16, 2001) and Finn et al. (US 7,377,225 B2; May 27, 2008). Appellant argues the patentability of dependent claims 2—10 solely on the basis of the alleged patentability of claim 1. Br. 6. ANALYSIS Appellant argues Fitzgerald fails to teach a first riser and a second riser configured as recited in claim 1. Br. 4—6. Specifically, Appellant argues that “to the extent Fitzgerald may discuss a system comprising multiple production risers extending, each of the portions of Fitzgerald cited by the Examiner makes it clear that each of the production risers are 2 Appeal 2015-006185 Application 13/881,604 connected to multiple subsea well heads through a subsea manifold.” Br. 4 (citing Fitzgerald 6, 8, 9, 12, 13). Further, Appellant argues Fitzgerald teaches away from the claimed invention with its disclosures of the “desirability of minimizing the number of production risers arising from the sea floor.” Br. 4. Having considered the Examiner’s rejection in light of Appellant’s arguments and the evidence of record, we disagree with Appellant. Although Fitzgerald describes benefits to having multiple subsea wellheads connected to a single riser (see, e.g., Fitzgerald 1 8), Fitzgerald evidences subsea wellheads “connected to surface facilities via individual risers” were known in the art (Fitzgerald 1 5). The fact that Fitzgerald discloses advantages of and a preference for risers connected to multiple subsea wellheads does not constitute a teaching away. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away [...] if it merely expresses a general preference for an alternative invention[.]”). Moreover, the Examiner finds, and Appellant does not dispute, that Finn evidences risers connected to individual subsea wellheads. See Final Act. 3; Br. 5 (arguing that, “[a]s Fitzgerald teaches away from the Examiner’s proposed modification, it is irrelevant whether or not Finn teaches the missing elements of the claim.”). It is the entirety of the teachings of the prior art, and not the teachings of Fitzgerald alone, that must be considered in concluding that the subject matter of claim 1 would have been obvious. Accordingly, we are unpersuaded of error in the Examiner’s rejection of claims 1—10. We agree with and adopt as our own the Examiner’s findings and conclusions, and we sustain the rejection of claims 1—10. 3 Appeal 2015-006185 Application 13/881,604 DECISION We sustain the Examiner’s rejection of claims 1—10. No time period for taking any subsequent action in connection with this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 4 Copy with citationCopy as parenthetical citation