Ex Parte Ohkubo et al

Patent Trial and Appeal Board

Jun 30, 2017

14029497 (P.T.A.B. Jun. 30, 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.
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.)
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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
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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
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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
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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
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“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
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