Ex Parte Nielsen et al

Patent Trial and Appeal Board

Nov 29, 2016

13095395 (P.T.A.B. Nov. 29, 2016)

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.
13/095,395 04/27/2011 Einar Nielsen PGS-10-43US 2523
136932 7590
CONLEY ROSE, P.C.
Jonathan M. Harris
1001 Mckinney
Suite 1800
HOUSTON, TX 77002-6417
12/01/2016 EXAMINER
MURPHY, DANIEL L
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
pathou @conleyrose.com
docketing@pgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EINAR NIELSEN and KARL PETTER ELVESTAD
Appeal 2015-003019
Application 13/095,395
Technology Center 3600
Before GEORGE R. HOSKINS, MICHAEL L. WOODS, and
SEAN P. O’HANLON, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Einar Nielsen and Karl Petter Elvestad (“Appellants”) seek our review
under 35 U.S.C. § 134(a) of the final rejection of claims 1—20. Appeal Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-003019
Application 13/095,395
CLAIMED SUBJECT MATTER
“The various embodiments [of Appellants’ disclosure] are directed to
a tail buoy for streamers towed behind a survey vessel during a marine
survey.” Spec. 117. Claims 1,11, and 17 are independent and claim 1 is
reproduced below, with emphases added to particular claim terms addressed
in this Decision.
1. A buoy comprising:
an elongated main body configured to be towed through
water and having a forward portion and an aft portion;
a mast system coupled to the elongated main body, the
mast system comprising:
a forward mast extending from the elongated main
body and coupled proximate to the forward portion, the
forward mast defining a first chord;
an aft mast extending from the elongated main body
and coupled proximate to the aft portion, the aft mast
defining a second chord parallel to the first chord;
a spanning portion coupled between a distal end of
the forward mast and a distal end of the aft mast; and
an aperture defined at least in part by the main body,
forward mast, aft mast, and spanning portion;
wherein the buoy is configured to float in water such that
the water level intersects the forward mast and aft mast, the
elongated body is submerged, and the spanning portion is
disposed above the water level.
Appeal Br. 37 (Claims App.) (emphases added).
THE REJECTIONS1
I. Claims 1 and 4—7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Lang (US 3,623,444, issued Nov. 30, 1971). Final Act. 5.
1 The final rejection of claims 11 and 12 as anticipated by Carapellotti (US
2,790,186, issued Apr. 30, 1957) (Final Act. 7) was withdrawn by the
Examiner (Ans. 2).
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Application 13/095,395
II. Claim 1 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Rinaldi (US 4,119,052, issued Oct. 10, 1978) and Lang.
Final Act. 8.
III. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rinaldi, Lang, Nitzki (US 4,069,788, issued Jan. 24,
1978), and McBride (US 2012/0076648 Al, published Mar. 29, 2012). Final
Act. 11.
IV. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lang and Solomon (US 5,616,059, issued Apr. 1, 1997).
Final Act. 14.
V. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lang and Dolengowski (US 4,890,568, issued Jan. 2,
1990). Final Act. 15.
VI. Claims 11—13 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lang and Nitzki. Final Act. 16.
VII. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lang, Nitzki, and Solomon. Final Act. 18.
VIII. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lang, Nitzki, and Dolengowski. Final Act. 19.
IX. Claims 17 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dolengowski and Lang. Final Act. 20.
X. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dolengowski, Lang, Nitzki, and McBride. Final Act. 24.
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Application 13/095,395
ANALYSIS
Rejection I: Claims 1 and 4—7 as Anticipated by Lang
The issue before us is whether Lang’s disclosure of a “high-speed
ship” (Lang, Abst.) satisfies the claim term “buoy.”
In rejecting independent claim 1 and its dependent claims 4—7, the
Examiner finds that “Lang discloses a buoy.” Final Act. 5 (citing Lang, col.
12,11. 4—5). In support of this finding, the Examiner asserts that Lang itself
“describes suitability of Lang’s design for, e.g., towed sonar, and deployed
as such, the disclosed apparatus is a towed buoy.’ '’ Id. (emphasis added)
(citing Lang, Fig. 3a, col. 12,11. 4—5). To illustrate the Examiner’s finding,
we reproduce Lang’s Figure 3a, below:
FIG. 3a
According to Lang, Figure 3a discloses “a ship, traveling at a high rate
of speed” (Lang, col. 7,1. 1) with tubular hull 50 {id. at col. 2,11. 58—59, col.
4,11. 2-5).
In contesting the rejection, Appellants assert that “the Office action
misreads Lang’s description,” and that “Lang’s ship is not a buoy.” Appeal
Br. 16.
In response to Appellants’ argument, the Examiner explains that the
claim term “buoy” “is merely the term used in the preamble ... so that it can
later be referenced as ‘the buoy’ in the final, wherein, clause” (Ans. 3) and
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Application 13/095,395
further explains that “the term ‘buoy’ has broad meaning, encompassing, in
general a floating device” {id. at 4).
Notwithstanding the Examiner’s explanation, we find Appellants’
argument persuasive. In maintaining the rejection, the Examiner appears to
rely on two different findings in order to satisfy the claim term “buoy,”
which we address separately, below.
First, the Examiner takes the position that Lang’s “disclosed apparatus
is a towed buoy,” because Lang itself “describes suitability of Lang’s design
for, e.g., towed sonar.” Final Act. 5. We disagree with this finding. The
particular reference to Lang instead discloses that:
The spatial disposition of the hulls coupled with their
location a considerable distance beneath the surface of the
water minimizes wave making and eddy noise and, accordingly,
provides an ideal location for carrying backward-looking
sonar, towed array sonar, towed whip sonar ....
Lang, col. 12,11. 1—6 (emphasis added). Notably, Lang discloses that the
ship’s hull design minimizes “wave making and eddy noise,” which makes
the ship ideal for towing sonar arrays. This is not a disclosure that Lang’s
hull design itself “is a towed buoy,” as set forth in the final rejection. Final
Act. 5 (“the disclosed apparatus is a towed buoy”).
Second, in the Answer, the Examiner takes the position that the claim
term “buoy” “recited in the preamble adds no further limitation” (Ans. 3),
and that the term “buoy” broadly encompasses any floating device {id. at 4).
However, a “claim’s preamble may limit the claim when the claim drafter
uses the preamble to define the subject matter of the claim” or “when it is
necessary to give life, meaning and vitality to the claim based on the facts of
the case at hand and in view of the claim as a whole.'1'’ August Tech. Corp. v.
Camtek, Ltd., 655 F.3d 1278, 1284 (Fed. Cir. 2011) (emphasis added)
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Application 13/095,395
(internal citations and quotation marks omitted). Further, the USPTO’s
interpretation of the claimed terms must be consistent with the specification.
In re Prater, 415 F.2d 1393, 1404—05 (CCPA 1969); In re Am. Acad. ofSci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Here, upon reviewing the facts of this case and the claimed invention
as a whole, we find that the claim term “buoy” gives meaning to the claim
and properly defines the invention. Notably, the claim recites, “a buoy
comprising [] an elongated main body configured to be towed through
water” (Appeal Br. 37 (Claims App.)), and the Specification makes clear
that the “various embodiments are directed to a tail buoy for streamers towed
behind a survey vessel during a marine survey” (Spec. 117 (emphasis
added)). In particular, the Specification “first turns to an illustrative marine
survey system, and then discusses tail buoys in accordance with various
embodiments.” Id.', see also id. at Figs. 2—7 (illustrating tail buoy 204 towed
in direction 200). Accordingly, a person of ordinary skill in the art, when
interpreting the claim term “buoy comprising [] an elongated main body
configured to be towed through the water” in light of the Specification,
would not construe “buoy” so broadly as to encompass any floating device,
including self-propelled ships, as the Examiner has done. See Final Act 5.
Rather, a person of ordinary skill in the art would understand that the claim
term “buoy” is limited to towed buoys and excludes self-propelled ships.
Accordingly, we do not sustain the rejection of independent claim 1
and its respective dependent claims 4—7 as anticipated by Lang.
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Application 13/095,395
Rejections IV—X: Claims 8—20 as Unpatentable
Over Lang and Other Cited Art
The rejections of claims 8—20 as unpatentable over Lang and the other
cited art are based on the same unsupportable interpretation of “buoy,” as
discussed supra with respect to Rejection I. See Final Act. 14—15 (Rejection
IV), 15—16 (Rejection V), 16—18 (Rejection VI), 18—19 (Rejection VII), 19-
20 (Rejection VIII), 20—21 (Rejection IX), and 24—27 (Rejection X).
Therefore, we also do not sustain the rejections of claims 8—20 as
unpatentable over Lang and the other cited art.
Rejection II: Claim 1 as Unpatentable Over Rinaldi and Lang
There are two issues before us in reviewing this rejection: (1) whether
the claim term “buoy” can be interpreted to only require the “capability to
float;” and (2) whether the Examiner’s interpretation of the claim term
“chord” properly considered a definition of that term provided in the
Specification. We address each of these issues separately, below.
With regards to issue (1) and the claim term “buoy,” the Examiner
determines that “the only essential generic requirement of a buoy [is the]
capability to float.” Final Act. 10. As discussed similarly with respect to
Rejection I, the Examiner’s interpretation of “buoy” is unreasonably broad,
unsupported by the record, and inconsistent with the Specification.
With regards to issue (2), the Examiner defines the claim term
“chord” to include simply “a straight line connecting two points.” Final Act.
9. Based on this interpretation, the Examiner finds that Rinaldi satisfies this
limitation as it discloses “at least one point above a waterline and at least
one point below the waterline, [and] provides two endpoints for a straight
line connecting those two points.” See id. at 9-10 (citing Rinaldi, Fig. 4).
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Application 13/095,395
In contesting the rejection, Appellants argue that the Examiner’s
interpretation of the claim term “chord” ignores the express definition of that
term provided in the Specification. Appeal Br. 23—24 (citing Spec. 112). In
particular, Appellants point out that the Specification defines “chord” to
“mean an imaginary straight line joining a trailing edge and a leading edge
of a fin, stabilizer, or mast.” Id. at 24 (citing Spec. 112). Appellants argue
that it was improper for the Examiner to ignore this express definition. Id.
Appellants’ argument is persuasive. Although the USPTO applies the
broadest reasonable interpretation in construing claim language, the USPTO
must take into account any definitions presented in the specification. In re
Am. Acad. ofSci. Tech. Ctr., 367 F.3d at 1364 (“[T]he PTO must apply the
broadest reasonable meaning to the claim language, taking into account any
definitions presented in the specification.” (quoting In re Bass, 314 F.3d
575, 577 (Fed. Cir. 2002))).
In the present case, the Examiner interprets the claim term “chord” to
broadly include “a straight line connecting two points” (Final Act. 9), and, in
doing so, ignores the express definition provided in the Specification (Spec.
112). Importantly, the Specification clearly defines “chord” as “an
imaginary straight line joining a trailing edge and a leading edge of a fin,
stabilizer, or mast.'1'’ Spec. 112 (emphasis added). Furthermore, the
Examiner’s interpretation of “chord” to support a finding that Rinaldi’s
“apparatus” (disclosed in Figure 4) satisfies the claim limitations is also in
error, as we do not see how a simple line connecting points above and below
the waterline meets the claim terms. See Final Act. 9-10 (emphasis added)
(“‘chord’ can mean ... a straight line connecting two points . . . [including]
at least one point above a waterline and at least one point below the
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Application 13/095,395
waterline, [which] provides two endpoints for a straight line”). In other
words, we do not see how a line connecting points above and below the
waterline can be construed as satisfying “a straight line joining a trailing
edge and a leading edge of a fin, stabilizer, or mast.”
For the foregoing reasons, we do not sustain the rejection of
independent claim 1 as unpatentable over Rinaldi and Lang.
Rejection III: Claims 2 and 3 as Unpatentable
Over Rinaldi, Lang, Nitzki, and McBride
The rejection of claims 2 and 3 as unpatentable over Rinaldi, Lang,
Nitzki, and McBride is based on the same unreasonably broad claim
interpretations and unsupportable findings relied on and discussed supra
with respect to Rejection II. Final Act. 11, 13. Therefore, we also do not
sustain the rejection of claims 2 and 3 as unpatentable over Rinaldi, Lang,
Nitzki, and McBride.
SUMMARY
The rejection of claims 1 and 4—7 under 35 U.S.C. § 102(b) as
anticipated by Lang is reversed.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Rinaldi and Lang is reversed.
The rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as
unpatentable over Rinaldi, Lang, Nitzki, and McBride is reversed.
The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Lang and Solomon is reversed.
The rejection of claims 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Lang and Dolengowski is reversed.
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Application 13/095,395
The rejection of claims 11—13 and 16 under 35 U.S.C. § 103(a) as
unpatentable over Lang and Nitzki is reversed.
The rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable
over Lang, Nitzki, and Solomon is reversed.
The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over Lang, Nitzki, and Dolengowski is reversed.
The rejection of claims 17 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Dolengowski and Lang is reversed.
The rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Dolengowski, Lang, Nitzki, and McBride is reversed.
REVERSED
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