Ex Parte Ohkubo et alDownload PDFPatent Trial and Appeal BoardJun 30, 201714029497 (P.T.A.B. Jun. 30, 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. 14/029,497 09/17/2013 Takahito OHKUBO P5016US01 7586 30671 7590 07/05/2017 DITTHAVONG & STEINER, P.C. Keth Ditthavong 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 EXAMINER MAYO-PINNOCK, TARA LEIGH ART UNIT PAPER NUMBER 3671 NOTIFICATION DATE DELIVERY MODE 07/05/2017 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): docket@dcpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKAHITO OHKUBO, TOSHIHIRO TANAKA, NOBUYOSHI OIKE, HIRONORI KAWAMURA, SHINICHI TANAKA, IKUO MORI YAM A, and MOTOO YOSHIOKA Appeal 2015-008036 Application 14/029,497 Technology Center 3600 Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and MATTHEW S. METERS, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s rejections of claims 1—10. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 “The real party in interest is KYOWA CO., LTD. and SUMITOMO CORPORATION.” (Appeal Br. 2.) Appeal 2015-008036 Application 14/029,497 STATEMENT OF THE CASE The Appellants’ invention “relates to methods for protecting a submarine long object.” (Spec. 1,11. 7—8.) Illustrative Claim 1. A method for protecting a submarine cable, an elongated tube, or a pipeline, comprising the steps of: installing bag-shaped filter units, each containing predetermined block objects, so as to cover the submarine cable, the elongated tube, or the pipeline on a seabed, wherein the filter units each comprise a bag body knitted with synthetic fiber yam, and the porosity of knitted fabric is between 45% and 90% in order to reduce the dragging force of water flowing through the bag body. Swain References US 3,861,158 Jan. 21, 1975 Miller US 5,193,937 Mar. 16, 1993 Yoshino US 6,305,876 B1 Oct. 23, 2001 Luc US 2005/0169713 A1 Aug. 4, 2005 Willis US 7,344,338 B2 Mar. 18, 2008 Rejections I. The Examiner rejects claims 1, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Swain. (Non-Final Action 3.) II. The Examiner rejects claims 1,3,4, 9, and 10 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Miller. (Non-Final Action 5.) III. The Examiner rejects claims 1, 5—9, and 10 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Willis. (Non-Final Action 6.) IV. The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as unpatentable over Yoshino, Swain, and Luc. (Non-Final Action 4.) 2 Appeal 2015-008036 Application 14/029,497 ANALYSIS Claim 1 is the sole independent claim on appeal, with the rest of the claims on appeal (i.e., claims 2—9) depending therefrom. (See Appeal Br., Claims App.) Independent claim 1 recites “[a] method for protecting a submarine cable, an elongated tube, or a pipeline.” (Id.) Independent Claim 1 Independent claim 1 recites the step of “installing bag-shaped filter units” having certain characteristics. (Appeal Br., Claims App.) The Examiner finds that Yoshino discloses bag-shaped filter units with the claimed characteristics. (See Non-Final Action 3, 6, 7.) The Examiner also finds that Yoshino teaches installing its bag-shaped filter units “to prevent scour around submarine objects.” (Answer 3.) Independent claim 1 also requires the bag-shaped filter units be installed “so as to cover [a] submarine cable, [an] elongated tube, or [a] pipeline on a seabed.” (Appeal Br., Claims App.) As indicated above, the Examiner finds that Yoshino teaches installing its bag-shaped filter units to prevent scour around a submarine object. (See Non-Final Action 3, 6, 7.) But, as correctly pointed out by the Appellants (see, e.g., Appeal Br. 7), Yoshino does not specify that this submarine object can be a cable, tube, or pipeline. The Examiner finds that Swain teaches “an elongated submarine object on a seabed,” that Miller teaches “a submarine pipeline,” and that Willis also teaches “a submarine pipeline.” (Non-Final Action 3, 6, 7.) In other words, the Examiner finds that Yoshino’s method comprises installing its bag-shaped filter units to prevent scour around a submarine object and a 3 Appeal 2015-008036 Application 14/029,497 secondary reference (i.e., Swain or Miller or Willis) teaches that a pipeline is a submarine object. The Examiner determines that it would have been obvious to combine Yoshino’s method with the teaching of a secondary reference (i.e., Swain or Miller or Willis) and the result of this combination would be that “the bag shaped filter units would be installed so as to cover an elongated object [i.e., a pipeline] to prevent scour of the seabed around the object.” (Non-Final Action 4; see also id. at 6, 7.) The Examiner explains that this modification of Yoshino’s method “would have merely required the combination of steps known in the art to yield predictable results.” (Id.) With respect to Swain, the Appellants’ arguments appear to be premised upon Yoshino’s bag-shaped filter units not being suitable for Swain’s submerged pipeline stabilizer. (See Appeal Br. 7.) With respect to Miller, the Appellants argue that Yoshino’s bag-shaped filter units “could not have been used in the manner intended in Miller, and would not have achieved the objectives described in Miller.” (Id. at 12.) With respect to Willis, the Appellants likewise argue that Yoshino’s bag-shaped filter units “could not have been used in the manner intended in Willis, and would not have achieved the objectives described in Willis.” (Id. at 14.) We are not persuaded by the Appellants’ arguments because they are not aligned with the Examiner’s rejection. In the Examiner’s combination of the prior art, the secondary reference (i.e., Swain, Miller, Willis) “has not been modified to include the bag bodies of Yoshino.” (Answer 4, 5, 7.) Instead, Yoshino’s method, which comprises installing its bag-shaped filter units to prevent scour around a submarine object, is modified so that a submarine pipeline is this object. The Appellants do not address this 4 Appeal 2015-008036 Application 14/029,497 combination of the prior art. The Appellants do not, for example, contend one of ordinary skill would not have known that a submarine pipeline would be susceptible to scour and/or would not have appreciated that covering such a pipeline with Yoshino’s bag-shaped filter units would prevent scour of the seabed around this object. Thus, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Swain (Rejection I); we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Miller (Rejection II); and we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Willis (Rejection III). Dependent Claim 2 Dependent claim 2 recites “the step of locating a position where said filter units are to be installed, by using a global positioning system.” (Appeal Br., Claims App.) The Examiner finds that Luc discloses “a method for deploying seafloor equipment comprising the use of a global positioning system (GPS).” (Non-Final Action 4.) And the Examiner determines that it would have been obvious to use a global positioning system when locating a position for the bag-shaped filter units in Yoshino’s modified method. (See id. at 4—5.) The Appellants argue that Luc “has no disclosure whatsoever about installing filter units” and thus it would not have been obvious to use GPS to locate a position for Yoshino’s bag-shaped filter units. (Appeal Br. 17.) We are not persuaded by the Appellants’ argument because Luc teaches that GPS is a “known method[] for controlling cable deployment to the bottom of the sea.” (Luc 53—54.) We agree with the Examiner that one of ordinary 5 Appeal 2015-008036 Application 14/029,497 skill in the art would have appreciated that GPS could be helpful when installing other seafloor equipment such as installing Yoshino’s bag-shaped filter units to cover a pipeline on the seabed. Thus, we sustain the Examiner’s rejection of dependent claim 2 under 35 U.S.C. § 103(a) as unpatentable over Yoshino, Swain, and Luc (Rejection IV). Dependent Claims 3—9 Dependent claims 3—9 are not argued separately from independent claim 1 and thus fall therewith. Thus, we sustain the Examiner’s rejection of dependent claim 9 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Swain (Rejection I); we sustain the Examiner’s rejection of dependent claims 3, 4, and 9 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Miller (Rejection II); and we sustain the Examiner’s rejection of dependent claims 5—9 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Willis (Rejection III). Dependent Claim 10 Dependent claim 10 recites the step of “preliminarily investigating in advance a condition of the seabed and a condition of tidal currents near the seabed in order to determine a size and a number of filter units required and a position where the filter units are to be installed.” (Appeal Br., Claims App.) The Examiner finds that Yoshino discloses such a preliminary investigation. (See Non-Final Action 3.) We agree with the Examiner that “any engineering project necessarily involves preliminary investigation,” and that this step is included in Yoshino’s method. (Answer 4—5.) We further note that Yoshino discusses a minimum size for its bag-shaped filter units is “determined depending upon the rate of water flow” and talks about 6 Appeal 2015-008036 Application 14/029,497 “a required number of bags each having a size large enough to resist the pressure of flowing water.” (Yoshino, col. 2,11. 64—65, col. 3,11. 2—3.) Thus, we sustain the Examiner’s rejection of dependent claim 10 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Swain (Rejection I); we sustain the Examiner’s rejection of dependent claim 10 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Miller (Rejection II); and we sustain the Examiner’s rejection of dependent claim 10 under 35 U.S.C. § 103(a) as unpatentable over Yoshino and Willis (Rejection III). DECISION We AFFIRM the Examiner’s rejections of claims 1—10. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation