Ex Parte McMillan et al

Patent Trial and Appeal BoardOct 31, 2012

10839781 (P.T.A.B. Oct. 31, 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. 10/839,781 05/04/2004 David W. McMillan 26780/28 5502 7590 11/01/2012 SHELL OIL COMPANY Legal Department-Intellectual Property One Shell Plaza, 47th Floor 910 Louisiana Street Houston, TX 77002 EXAMINER MAYO-PINNOCK, TARA LEIGH ART UNIT PAPER NUMBER 3671 MAIL DATE DELIVERY MODE 11/01/2012 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 DAVID W. MCMILLAN, DONALD W. ALLEN, DEAN L. HENNING and STEPHAN P. ARMSTRONG ____________ Appeal 2010-005344 Application 10/839,781 Technology Center 3600 ____________ Before JENNIFER D. BAHR, KEN B. BARRETT, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005344 Application 10/839,781 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-3 under 35 U.S.C. § 103(a) as unpatentable over Nichols (US 3,194,204, iss. July 13, 1965) in view of Chatten (US 3,899,991, iss. Aug. 19, 1975). Claims 4-7 have been withdrawn from consideration by the Examiner. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER All of the appealed claims 1, 2, and 3 are independent claims. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An apparatus for controlling drag and vortex- induced vibration, comprising: a fairing body suitable for abutting against a cylindrical marine element; the fairing body comprising a first female half of a first mating connector, and a first female half of a second mating connector supported by the fairing body; a strap having a second male half of the first mating connector, and a second male half of the second mating connector, wherein the first female half and the second male half of the first mating connector are suitable for forming a first connection, and wherein the first female half and the second male half of the second mating connector are suitable for forming a second connection. Appeal 2010-005344 Application 10/839,781 3 OPINION Claims 1, 2, and 3 call for an apparatus, a system, and method, respectively, wherein each claim requires a fairing body including “a first female half of a first mating connector, and a first female half of a second mating connector supported by the fairing body,” and a strap including “a second male half of the first mating connector,” and a “second male half of the second mating connector.” See App. Br., Claims Appendix. The Examiner finds that Nichols discloses “the fairing body comprising a first male half of a first mating connector, and a first male half of a second mating connector (i.e., the half sections of element [side edge portion] 10) supported by the fairing body” and “a connector [(nose piece)] (8) comprising a second female half of the first mating connector, and a second female half of the second mating connector.” Ans. 4. According to the Examiner the locations of Nichols’ female and male half connectors are reversed as compared to the claims. See Ans. 5, 7. The Examiner concludes that it would have been obvious to reverse the male and female halves of the first and second mating connectors, “since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.” See Ans. 5. The Examiner’s finding that Nichols’ “half sections” of side edge portion 10 correspond to “a first male half of a first mating connector, and a first male half of a second mating connector” is incorrect. See Br. 4-5. Nichols discloses that the nose piece 8 has an elongated U-shaped channel that receives side edge portions 10 of tail piece 9. The face of each side edge portion10 includes a slight notch 11 to receive the arms of the nose piece 8, so that the outer sides of the nose piece 8 and the tail piece 9 are Appeal 2010-005344 Application 10/839,781 4 continuously flush where they meet and overlap. See Nichols, col. 2, ll. 42- 44, 55-65, fig. 4. Two scenarios appear as possibilities for the Examiner’s finding that “the fairing body comprising a first male half of a first mating connector, and a first male half of a second mating connector (i.e., the half sections of element [side edge portion] 10) supported by the fairing body.” However, both possibilities are inadequately supported. First, the side edge portions 10 may be considered as forming a male half connector that mates with the channel formed between the arms of nose piece 9, i.e., a female half connector. Under that reading of Nichols there would be only one mating connector, and the claims require two mating connectors. Alternatively, each side edge portion 10 may be considered a half of a mating connector that mates with each arm of the nose piece 9. Under that reading there would be two mating connectors, but the individual side edge portions 10 cannot reasonably be considered male half connectors. As such, the Examiner does not cogently explain how the half sections of side edge portion 10 can be read to be a first male half connector and a second male half connector. Nor can we ascertain how Nichols’ side edge portion 10 could be read to include a first male half connector and a second male half connector. Consequently, the Examiner’s proposed modification reversing the male and female halves of mating connectors does not appear to make up for the deficiency in Nichols as modified by Chatten. That is, it is not clear how Nichols and Chatten can be combined to render obvious the subject matter of claims 1-3, including a strap having “a second male half of the first mating connector,” and a “second male half of the second mating Appeal 2010-005344 Application 10/839,781 5 connector.” In other words, the Examiner relies on Chatten for its disclosure of straps (clips) 24 and 26, which according to the Examiner is a substitute for Nichols’ nose piece 8. Ans. 5. Notably, Chatten’s clips 24 and 26 also lack male half connectors. See Br. 5. As such, the Examiner’s findings with respect to Chatten do not remedy the unsubstantiated finding discussed above. Since Nichols’ nose piece 8 and tail piece 9 lack a first male half connector and second male half connector, which is not remedied by the Examiner’s findings with respect to Chatten, the Examiner’s reasoning is not adequately supported. Thus, the Examiner’s rejection of claims 1-3 under 35 U.S.C. § 103(a) as unpatentable over Nichols in view of Chatten is not sustained. DECISION We REVERSE the rejections of claims 1-3. REVERSED mls