Arslan, Haydar et al.

Patent Trials and Appeals Board

Mar 25, 2020

14591669 - (D) (P.T.A.B. Mar. 25, 2020)

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.
14/591,669 01/07/2015 Haydar Arslan 2014EM022 7249
34477 7590 03/25/2020
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-N1.4A.607)
Spring, TX 77389
EXAMINER
TOLEDO-DURAN, EDWIN J
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
urc-mail-formalities@exxonmobil.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HAYDAR ARSLAN and PATRICK C. WONG

Appeal 2019-004813
Application 14/591,669
Technology Center 3600
____________

Before MICHAEL L. HOELTER, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“ExxonMobil Upstream Research Company.” Appeal Br. 3.
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Application 14/591,669

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The disclosed subject matter “relates generally to a modified pile
foundation system for scour protection.” Spec. ¶ 2. Claims 1, 11, 19, and
21 are independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A system for reducing scouring, comprising:
a pile having a maximum cross-sectional dimension, Dp;
and
an enclosure circumferentially disposed around the pile,
the enclosure having a first end proximate a surface of a seabed
and proximate a top end of the pile; a second end distal the
surface of the seabed, and a maximum cross-sectional
dimension, De, wherein De is at least l.25*Dp providing a soil
sediment area within the seabed between an outer surface of the
pile and an inner surface of the enclosure such that the soil
sediment area provides load carrying capacity for the pile;
wherein the enclosure is fixedly attached to the top end of the
pile.
EVIDENCE
Name Reference Date
Groneck et al.
(“Groneck”)
US 6,012,874 Jan. 11, 2000
Saugier et al. (“Saugier”) US 6,659,182 B1 Dec. 9, 2003
Maconocie et al.
(“Maconocie”)
US 2011/0002742 A1 Jan. 6, 2011
Hosøy et al. (“Hosøy”) US 2012/0003048 A1 Jan 5, 2012
Harris US 8,596,919 B2 Dec. 3, 2013
REJECTIONS
Claims 1–5 and 7–21 are rejected under 35 U.S.C. § 103 as
unpatentable over Harris and Maconocie.
Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over Harris,
Maconocie, and Saugier.
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Application 14/591,669

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Claims 1–5, 7, and 9–21 are rejected under 35 U.S.C. § 103 as
unpatentable over Hosøy and Maconocie.
Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
Hosøy, Maconocie, and Saugier.
Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over
Hosøy, Maconocie, and Groneck.
Claims 1, 11, 19, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Maconocie and Harris.
ANALYSIS
The rejection of claims 1–5 and 7–21
as unpatentable over Harris and Maconocie
Each independent claim on appeal, i.e., claims 1, 11, 19, and 21, is
directed to a pile and also an enclosure disposed around the pile, “wherein
the enclosure is fixedly attached to the top end of the pile.” The Examiner
primarily relies on Harris for disclosing many of the recited limitations, but
acknowledges that “Harris is silent about . . . the enclosure fixedly attached
to the top end of the pile.” Final Act. 3. The Examiner relies on Maconocie
for teaching such an enclosure attached to the top of a pile and states that the
“motivation” for combining Harris and Maconocie would arise from those
“settings that [don’t] require long piles.” Final Act. 3 (referencing
Maconocie ¶ 33); see also Maconocie Figs. 2, 3A, 3B, 8.
Appellant challenges the combination of Harris and Maconocie
stating, “fixing the disk of Harris to the pile of Harris [as disclosed in
Maconocie] would be adverse to the functionality of Harris which is
designed to be able to move separate from the pile.” Reply Br. 9; see also
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Application 14/591,669

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Appeal Br. 18–21(“it is the clear intent of Harris to fix the disk to the seabed
(not to fix the pile to the disk as in the presently claimed invention)”).
There is merit to Appellant’s contentions. Harris clearly discloses the
disk (i.e., the recited “enclosure”) “configured to be installed on the seabed
with the pile protruding through the pile opening.” Harris 2:26–27, 2:37–38.
Harris explains that “pile opening 7” of the disk is “adapted to receive the
pile for installation through the disk and into the seabed 2.” Harris 4:12–16;
see also id. at 6:64–66 (“When the disk 6 is finally installed on the seabed,
the pile 1 can be driven through the pile opening 7 in the disk into the seabed
2 below.”). Thus, it is not altogether clear why, even if employing shorter
piles as suggested by the Examiner (see Final Act. 3), one skilled in the art
would fixedly attach the disk to the top end of Harris’ pile (as recited) when
Harris’ disk is, instead, designed to “receive the pile” once the disk is
“installed on the seabed.” See supra. Additionally, there is no indication
that the top of Harris’ pile, even if shortened, is anywhere near the seabed
upon installation.2 See Harris Figs. 1, 2, 4, 8.
The Examiner also finds that “the anti-scour disk of Harris would
work equally well with piles with their upper ends proximate to the upper
surface of the disk.”3 Ans. 20; see also Ans. 22, 23, 25, 27. However, the
Examiner does not explain how Harris’ pile would actually be able to “work
equally well,” such as by providing support to “offshore wind turbines” and

2 Harris is silent regarding the top of the pile being anywhere near the
seabed. The pile can be used to support an offshore wind turbine (Harris
1:35–37), which would be located at the surface rather than at the seabed.
3 The Examiner finds “the length of the pile above the enclosure in Harris is
not a critical element.” Ans. 20.
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Application 14/591,669

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the like (Harris 1:21–23), when Harris’ pile only extends “proximate to the
upper surface of the disk,” and no further.
Thus, based on the record presented, the Examiner’s “motivation” for
combining Harris and Maconocie (i.e., use of a shorter pile) lacks sufficient
articulated reasoning with rational underpinning. In other words, without
more explanation on the part of the Examiner, Appellant is persuasive that
the operation and function of Harris would be compromised by affixing the
enclosure to the top of Harris’ pile and also locating the enclosure adjacent
the seabed to reduce scouring. In short, the Examiner has not provided the
requisite support for the legal conclusion of obviousness when suggesting
that the combination of Harris and Maconocie renders obvious the limitation
“wherein the enclosure is fixedly attached to the top end of the pile.” See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we do not sustain the
Examiner’s rejection of independent claims 1, 11, 19, and 21, nor dependent
claims 2–5, 7–10, 12–18, and 20.
The rejection of claim 6
as unpatentable over Harris, Maconocie, and Saugier
Claim 6 depends directly from claim 1. The Examiner does not rely
on Saugier to cure the defect discussed above regarding securement to the
top of the pile. See Final Act. 8–9. Thus, we likewise do not sustain the
Examiner’s rejection of claim 6 as being obvious over Harris, Maconocie,
and Saugier.

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Application 14/591,669

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The rejections of: (a) claims 1–5, 7, and 9–21 as unpatentable over Hosøy
and Maconocie; (b) claim 6 as unpatentable over Hosøy, Maconocie, and
Saugier; (c) claim 8 as unpatentable over Hosøy, Maconocie, and Groneck;
and, (d) claims 1, 11, 19, and 21 as unpatentable over Maconocie and
Harris
Each rejection above is recited in the Examiner’s Final Office Action,
and subsequently replicated in the Examiner’s Answer. See Final Act. 9–18;
Ans. 9–19. Appellant presents no arguments with respect to any of these
rejections. See Briefs generally. In fact, under the heading “Grounds of
Rejection to be Reviewed,” Appellant only identifies the two rejections
where Harris is the primary reference (and whose rejections are not
sustained). Appeal Br. 10. Appellant does not discuss any of the above
rejections where either Hosøy or Maconocie are primarily relied upon.
The Manual of Patent Examiner Procedure (MPEP) § 1205.02 states,
“[i]f a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it.” We hereby sustain the
above (and in some cases, redundant) rejections of claims 1–21.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–21 103 Harris, Maconocie 1–5, 7–21
6 103 Harris, Maconocie,
Saugier
6
1–5, 7, 9–
21
103 Hosøy, Maconocie 1–5, 7, 9–21
6 103 Hosøy, Maconocie,
Saugier
6
Appeal 2019-004813
Application 14/591,669

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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8 103 Hosøy, Maconocie,
Groneck
8
1, 11, 19,
21
103 Maconocie, Harris 1, 11, 19, 21
Overall
Outcome4
1–21
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

4 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim
on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim.”