Ex Parte Ding et al

Patent Trial and Appeal Board

Apr 9, 2013

11332707 (P.T.A.B. Apr. 9, 2013)

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.
11/332,707 01/13/2006 Yun Ding 6249 4506
41177 7590 04/10/2013
J. RAY MCDERMOTT, S.A.
PATENT DEPARTMENT
757 NORTH ELDRIDGE PARKWAY
HOUSTON, TX 77079
EXAMINER
ANDRISH, SEAN D
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
04/10/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUN DING and WILLIAM LAWRENCE SOESTER
____________

Appeal 2011-001497
Application 11/332,707
Technology Center 3600
____________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/332,707

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STATEMENT OF THE CASE
Yun Ding et al. (Appellants) appeal under 35 U.S.C. § 134 from a
final rejection of claims 1, 5-7, 9, 17, 19, and 22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to “floating offshore structures and
more particularly to semi-submersible floating offshore structures.”
Specification, para. [0001]. Claims 1, 5-7, 9, 17, 19, and 22 are pending and
subject to this appeal. Claims 1, 7, 17, and 22 are independent. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below with the
key disputed limitation emphasized:
1. A semi-submersible floating offshore structure, comprising:
a. a buoyant hull comprised of a plurality of columns supported
a their lower ends by at least two pontoons at
conventional semi-submersible hull depth and topside
structural framing connecting the columns together at
their upper ends, the columns defining a space below the
topside structural framing, the at least two pontoons
being on opposite sides of said space;
b. a truss frame extending in the space and below the topside
structural framing, the truss frame comprising a plurality
of truss legs that are rigidly attached to said columns of
said buoyant hull in said space, said truss frame being
taller than the height of the buoyant hull and extending
below said pontoons to a depth in the water of minimized
motions caused by wind and wave forces; and
c. a plurality of vertically spaced horizontal heave plates
attached to said truss frame, each heave plate having a
solid portion that extends across an entire width and
length of the truss frame between the truss legs, the heave
plates at a depth of three to five times the hull draft and
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forming bays for trapping water between the heave plates
during movement of the semi-submersible floating
offshore structure caused by wave forces for increasing
an effective mass of the semi-submersible floating
offshore structure to reduce motions of the semi-
submersible floating offshore structure.
EVIDENCE
The Examiner relies on the following evidence:
Finn US 6,637,979 Oct. 28, 2003
Horton US 5,558,467 Sep. 24, 1996

REJECTIONS
Appellants seek review of the Examiner’s rejection of claims 1, 5-7, 9,
17, 19, and 22 under 35 U.S.C. § 103(a) as unpatentable over Finn and
Horton. App. Br. 3; Ans. 4. Appellants also seek review of the Examiner’s
rejection of claims 1, 5-7, 9, 17, and 19 under 35 U.S.C. § 112, second
paragraph, as indefinite. Id. Appellants do not seek review of the
Examiner’s rejection of claims 1, 5-7, 9, 17, 19, and 22 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Ans. 3.
ANALYSIS
Rejection under § 112, First Paragraph
Because Appellants provide no arguments regarding the Examiner’s
outstanding rejection of claims 1, 5-7, 9, 17, 19, and 22 under 35 U.S.C.
§ 112, first paragraph, we sustain this rejection. See App. Br. 3.
Rejection under § 112, Second Paragraph
The Examiner finds that claims 1, 5-7, 9, 17, and 19 are indefinite
because the term “conventional” fails to define the metes and bounds of the
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claim limitation. Appellants contend that the Examiner’s rejection is based
on a misunderstanding of “the history of semi-submersible structures in the
offshore industry and what is considered ‘conventional’ in the industry.”
App. Br. 10. Appellants cite Wikipedia and www.rigzone.com websites as
explaining the history and current use of semi-submersible structures, and
then attempt to define “conventional” by what the term does not mean (i.e.,
that conventional does not include “deep” semi-submersible structures). Id.
Alleging that the Examiner’s rejection is based on a misunderstanding of the
offshore industry and then asserting that the term “conventional” is defined
as not including deep semi-submersible structures is not persuasive
regarding definiteness and whether a skilled artisan would understand what
is claimed when that term is read in light of Appellants’ Specification. We
sustain the Examiner’s rejection under § 112, second paragraph.
Rejection under 35 U.S.C. § 103(a)
Claim 1
The Examiner finds that Finn discloses an offshore structure
comprising all of the claim limitations except for: (1) a truss frame being
substantially taller than the height of the buoyant hull; (2) a plurality of
heave plates having a plurality of bores therein; and (3) a keel tank. Ans. 4-
5. The Examiner finds that Horton teaches an offshore structure comprising
a plurality of horizontal heave plates 55 attached to a truss frame 26, each
heave plate including a plurality of bores through which a riser system 42
passes, and heave plate extensions 60 that extend beyond the truss frame to
reduce motion caused by wind and wave forces. Ans. 5. The Examiner also
finds that Horton discloses a keel tank 70, and the truss frame being
substantially taller than the height of the buoyant hull to increase the mass of
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entrapped water and inhibit heave motion. Id. The Examiner concludes that
it would have been obvious to one of ordinary skill in the art, at the time the
invention was made, to add Horton’s heave plate(s) to the structure of Finn
to increase the mass of entrapped water and inhibit heave motion. Ans. 5-6.
In the Answer, the Examiner also notes that the purpose of a heave
plate is to reduce motion caused by wind and wave forces, and the guides 20
of Finn perform the same function by protecting the semi-submersible from
impact damage from environmental forces acting on the platform. Ans. 6.
Finn’s guides 20 extend across an entire width and length of the truss frame
and are solid plates except for holes through which air cans are placed. Id.
(citing Figures 2 and 3 of Finn). The Examiner concludes that Finn’s
guides 20 are identical to the heave plates of Horton which have holes
through which risers extend, and concludes that it would also have been
obvious to one of ordinary skill in the art to replace Finn’s guides 20 with
Horton’s heave plates and to extend the length of the truss structure as taught
by Horton to protect the semi-submersible from impact damage from
environmental forces acting on the platform. Id.
Appellants argue that Finn teaches a specially-designed and
constructed semi-submersible structure that is adapted to accept a
telescoping truss frame with a single heave plate at its lower end, which is
the only location capable of receiving such a horizontal plate. App. Br. 4-5.
Appellants argue that, not only is Finn's structure incapable of receiving a
second plate at a higher elevation in the truss frame, but Finn neither teaches
nor suggests how, or even if, a second mass adding device (horizontal plate)
can be added to its structure or any other similar structure. App. Br. 5.
Appellants also argue that the Examiner’s obviousness interpretation is
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incorrect and illustrates a misunderstanding of some basic aspects of Finn
and their invention, because additional heave plates attached to lateral
supports 24 of Finn would clash with the air cans 18. Id. The Examiner
uses Horton for the teaching of additional heave plate(s), and Appellants do
not address the Examiner’s argument that heave plates can be
accommodated at the location of Finn’s similarly-located guides.
Appellants’ argument is not persuasive because the test for obviousness is
what the combined teachings of the references would suggest to a skilled
artisan and not whether features of a secondary reference can be combined
physically with features of a primary reference.
Appellants allege that Finn understands the benefit of a heave plate in
suppressing heave motions and only teaches the use of a single plate. App.
Br. 5. Appellants allege that because Finn neither teaches nor suggests the
use of more than one heave plate, the Examiner is using the benefit of
hindsight to redesign Finn without supporting engineering data and thus is
making an unsupported conclusion. Id. The Examiner set forth a reason
with a rational underpinning for combining Finn and Horton. Ans. 5-6.
Appellants have not explained why the Examiner’s articulated reason is
ineffective to support the conclusion of obviousness. We therefore are not
persuaded by this argument.
Appellants also argue that Finn's design requires that an entirely new
structure be built from the ground up, whereas their invention does not
require that a new structure be built in order to incorporate the benefits of
the design. App. Br. 5. The claims, however, do not recite such an existing-
structure limitation and these arguments are therefore unpersuasive.
Appellants then argue the length of Finn’s telescoping truss section is
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directly related to the depth of the semi-submersible hull, and that this
“presents a limitation that requires the semi-submersible hull of Finn to be
deeper in order to have a heave plate at the lower end of the truss section
that will reach a depth for reducing heave motions.” App. Br. 6. Appellants
then present sketches and arguments regarding Finn’s CG (Center of
Gravity) being farther above its CB (Center of Buoyancy) than the present
invention, the effect of the CG’s location on the stability of Finn’s structure,
and the importance of stability when ballasting down. App. Br. Evid.
App’x. However, Appellants’ claims recite neither the location of the CG
nor a level of stability, and we therefore are not persuaded by these
arguments.
Appellants then argue that the Advisory Action dated October 2,
2009, illustrates a “basic misunderstanding of the fundamentals of Finn and
the present invention” in that the Examiner erroneously found that Finn’s
truss frame included the triangular support structure located at the upper end
of the air cans 18. App. Br. 7. Appellants allege that the triangular section
referenced by the Examiner is stationary. Id. Even if the triangular support
structure is stationary, Appellants have not explained why the Examiner’s
belief that the triangular support structure was part of the truss frame caused
error in the Examiner’s determination of prima facie obviousness as set forth
in the Answer. We are therefore not persuaded by this argument.
Regarding Horton, Appellants argue that the hull of Horton, without
the attached truss structure, is not viable as an offshore structure due to an
inherent instability without the truss structure. App. Br. 7-8. We are not
persuaded by this argument because hull stability without the truss structure
is not recited in the claims.
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Appellants also argue that Horton and Finn are “completely different
devices,” because Horton is directed to a single deep draft caisson (a spar),
as opposed to a multi-column structure of a semi-submersible, which
requires additional structure below the caisson for stability, and Finn is
directed to a semi-submersible that has been designed to have a deeper draft
hull than typical semi-submersibles, requiring that the depth of the hull and
the truss frame are directly related to each other. App. Br. 8. Appellants
state that “[t]he connotation of a semi-submersible in the offshore oil and
gas industry is of a structure that has a much shallower draft than the deep
draft caisson of Horton,” and that Finn is neither a deep draft caisson spar
type structure nor a conventional draft semi-submersible and therefore
teaches away from their invention which include a typical semi-submersible
that readily accepts the truss section to achieve the preferred motion
characteristics of a deep draft caisson without the undesirable motion
characteristics of the typical semi-submersible structure. Id. We are not
persuaded by Appellants’ teaching away arguments. It is not enough for an
Appellant to show that two references have differences, see In re Beattie,
974 F.2d 1309, 1312-13 (Fed. Cir. 1992), and Appellants have not explained
why the prior art would, for example, lead a person of ordinary skill in the
art in a direction divergent from that claimed, see In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994).
To the extent that Appellants are impliedly arguing that neither Finn
nor Horton discloses pontoons at a “conventional” semi-submersible depth,
Appellants have not defined the term “conventional” (with the exception of
what conventional is not), and we are therefore not persuaded by such
arguments.
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For the reasons set forth above, we sustain the rejection of claim 1
under 35 U.S.C. § 103(a) as unpatentable over Finn and Horton.
Claims 5-7, 9, 17, 19, and 22
Appellants’ Brief has paragraphs with separate headings for claims 5-
7, 9, 17, 19, and 22. Appellants do not challenge the Examiner’s findings
that each of the respective dependent limitations is found in the cited
references. App. Br. 8-9. Instead, Appellants merely summarily state that
each of the claims includes an additional patentable feature.
Inasmuch as we sustain the Examiner’s rejection of claim 1 and
Appellants have failed to identify any facts or articulate any technical
reasoning that would patentably distinguish claims 5-7, 9, 17, 19, and 22
from the cited prior art references, we sustain the Examiner’s rejection of
claims 5-7, 9, 17, 19, and 22 for the same reasons as stated herein with
respect to claim 1.

DECISION
We AFFIRM the Examiner’s rejection of claims 1, 5-7, 9, 17, and 19
under 35 U.S.C. § 112, second paragraph, as indefinite.
We AFFIRM the Examiner’s rejection of claims 1, 5-7, 9, 17, 19, and
22 under 35 U.S.C. § 103(a) as unpatentable over Finn and Horton.
We AFFIRM the Examiner’s rejection of claims 1, 5-7, 9, 17, 19, and
22 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
AFFIRMED

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