Ex Parte Ward

Patent Trial and Appeal Board

Aug 2, 2017

13696835 (P.T.A.B. Aug. 2, 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.
13/696,835 11/08/2012 John Michael Ward TH4025 US 2791
23632 7590
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 77252-2463
EXAMINER
LEMBO, AARON LLOYD
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
08/04/2017 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 JOHN MICHAEL WARD1
Appeal 2016-004773
Application 13/696,835
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—13, which constitute all the claims pending in
this application. App. Br. 2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Shell Oil Company is listed as the real party in interest. App. Br. 2.
2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the following documents for their respective
details: the Final Action mailed March 11, 2015 (“Final Act.”); the Appeal
Brief filed September 15, 2015 (“App. Br.”); and the Examiner’s Answer
mailed January 15, 2016 (“Ans.”).
Appeal 2016-004773
Application 13/696,835
STATEMENT OF THE CASE
Appellant describes the present invention as “[a] system and method
of exploiting an offshore oil and gas reservoir, comprising installing a
drilling structure in a body of water; drilling a plurality of wells from the
drilling structure; and providing a plurality of buoyant, flexible structures
adjacent to the well.” Abstract.
Independent claim 1, reproduced below with added emphasis, is
illustrative of the appealed claims:
1. An offshore system in a body of water, comprising:
a drilling structure at a surface of the body of water;
a drill bit in a well beneath a bottom of the body of water;
an environmentally sensitive area offset a distance from
the well; and
a plurality of buoyant, flexible structures arrayed between
the well and the environmentally sensitive area, wherein the
buoyant, flexible structures are flat hoses that are capable of
being deployed in an uninflated rolled up condition and then
inflated into an upright position.
Claims 1—10 stand rejected under 35 U.S.C. § 102(a) as anticipated by
Elmer (WO 2009/121336 A2; published Oct. 8, 2009). Final Act. 3—6.3
Claims 11—13 stand rejected under 35 U.S.C. § 103(a) as obvious over
Elmer. Final Act. 6—7.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
3 The Examiner relies upon Elmer (US 8,636,101 B2; issued January 28,
2014) to serve as an English language translation of Elmer’s WO ’336 patent
document. See Final Act. 2. All references to Elmer’s invention will set
forth citations to Elmer’s US ’101 patent (hereafter “Elmer”).
2
Appeal 2016-004773
Application 13/696,835
FINDINGS AND CONTENTIONS
The Examiner finds that Elmer discloses every limitation of
independent claim 1. Final Act. 3^4 (citing inter alia Elmer col. 7,11. 43—52
for disclosing the “buoyant, flexible structures are flat hoses that are capable
of being deployed in an uninflated rolled up condition and then inflated into
an upright position,” as recited by claim 1).
Appellant asserts inter alia that “Elmer fails to disclose ‘a plurality of
buoyant, flexible structures arrayed between the well and the
environmentally sensitive area, wherein the buoyant, flexible structures are
flat hoses that are capable of being deployed in an uninflated rolled up
condition and then inflated into an upright position.”' App. Br. 4.
According to Appellant, “while certain portions of Elmer describe that the
carrier element and envelope bodies may be produced from an elastic tube
material. . ., this tube material cannot be construed as a flat hose.” Id.
(citation omitted). Appellant urges that “simply being capable of being in a
compact pack is not inherently the same as being flat, being in a rolled up
condition, or being capable of being inflated into an upright position when in
a rolled up condition.” Id. at 5, emphasis omitted.
ANALYSIS
The relevant Examiner-cited passage of Elmer reads as follows:
It is advantageous that individual envelope bodies and/or
carrier elements can be filled on-site with a gas, for example
compressed air, for the purpose of supplementing existing
envelope bodies and/or generating buoyancy, stability and/or for
the purpose of spatial development of the device. This enables
the device to be transported as a compact pack to the application
site and, for example, the spatial development of the device under
3
Appeal 2016-004773
Application 13/696,835
water to be realized by means of compressed air, without the
deployment of personnel, or with deployment of only a small
number of personnel.
Elmer col. 7,11. 43—52, cited in Final Act. 4.
We find no reason precluding Elmer’s flexible tube (2) from being
interpreted as constituting a hose. It has been known for quite some time
was that flat hoses are capable of being deployed in an uninflated rolled up
condition. However, the fact that such flat hoses were known does not
answer the relevant question, which is whether Elmer further reasonably
discloses that the flexible hoses taught therein necessarily must be flat—at
least when uninflated.4
A common round garden hose is an example of a flexible hose that
naturally retains its axially round profile when uninflated and rolled up. To
be sure, round garden hoses can be flattened under force, such as when a car
drives over them. But that fact does not mean it is reasonable—at least not
on the present record—to interpret such naturally round hoses as constituting
flat hoses. At best, such hoses, instead, merely can be said to be flattenable.
For the above mentioned reasons, then, the Examiner has not
established that Elmer’s disclosed flexible hoses necessarily are flat hoses.
Accordingly we do not sustain the Examiner’s anticipation rejection either
of claim 1 or of claims 2—10, which ultimately depend from claim 1.
With respect to claims 11—13, the obviousness rejection is predicated
on the theory that what Elmer fails to teach is the recited drilling of a
plurality of wells (see Final Act. 7)—not that Elmer fails to teach flat hoses.
4 We reach no conclusions as to whether the presently claims flat hoses read
on hoses that have a naturally flat axial profile when uninflated, but have a
round axial profile when inflated.
4
Appeal 2016-004773
Application 13/696,835
We therefore do not sustain the rejection of claims 11—13 for the reasons set
forth above in relation to claims 1—10.5
DECISION
The Examiner’s decision rejecting claims 1—13 is reversed.
REVERSED
5 Because the issue is not before us, we do not decide whether the use of flat
hoses in Elmer’s invention would have been obvious, as opposed to
disclosed inherently.
5