Ex Parte Lau

Patent Trial and Appeal Board

Mar 16, 2017

13881604 (P.T.A.B. Mar. 16, 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.
13/881,604 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
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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.
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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
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