Ex Parte Haney et al

Patent Trial and Appeal Board

Nov 26, 2012

11702349 (P.T.A.B. Nov. 26, 2012)

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.
11/702,349 02/05/2007 James Allan Haney 6251 8214
41177 7590 11/27/2012
J. RAY MCDERMOTT, S.A.
PATENT DEPARTMENT
757 NORTH ELDRIDGE PARKWAY
HOUSTON, TX 77079
EXAMINER
OLSON, LARS A
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
11/27/2012 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 JAMES ALLAN HANEY and CHENG-YO CHEN
____________________

Appeal 2010-011008
Application 11/702,349
Technology Center 3600
____________________

Before: GAY ANN SPAHN, BRETT C. MARTIN, and RICHARD E.
RICE, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/702,349
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STATEMENT OF CASE
James Allan Haney and Cheng-Yo Chen (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s rejection of claims 1-12 and 14-16. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
Appellants’ invention is directed generally “to the reduction of vortex
induced vibrations or motions in a structure due to fluid flow around the
structure and more particularly to the reduction of such vibration or motions
through the use of strakes on the structure.” Spec., para. [0001]. Claims 1
and 14, reproduced below, are illustrative of the claimed subject matter on
appeal:
1. On a structure subject to fluid flow that results in vortex
induced vibrations or motions and having at least one strake
that extends radially from and extends in a spiral pattern around
the structure, an improved strake, said improved strake
comprising a streamliner and stiffener attached to the end of the
strake distant from the structure that increases reduction of
vortex induced vibrations or motions by affecting translational
water flow.

14. A tension resisting support for a spiral strake on a
cylindrical structure, comprising a rigid block attached to each
end of the strake and the cylindrical structure, such that
distortions of the strake normal to the surface of the strake
stretch the strake against the tension resisting support, thereby
inducing tension in the strake in the spiral direction.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Application 11/702,349
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Egolf
Richter
Horton
US 6,260,809 B1
US 6,575,665 B2
US 6,953,308 B1
Jul. 17, 2001
Jun. 10, 2003
Oct. 11, 2005

REJECTIONS
The Examiner made the following rejections, which are under appeal:
Claim 16 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. Ans. 3.
Claim 1-12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richter in view of Egolf. Ans. 3.
Claim 14-16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horton. Ans. 4.

ANALYSIS
Rejection under 35 U.S.C. § 112, 2nd Paragraph
The Examiner rejects claim 16 as indefinite due to lack of antecedent
basis for inclusion of the term “the tip” in claim 16 essentially because there
is no first recitation of “a tip.” The test for definiteness under 35 U.S.C.
§ 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). See also In re Hammack,
427 F.2d 1378, 1382 (CCPA 1970) (“the essence of [the] requirement [under
35 U.S.C. § 112, second paragraph,] is that the language of the claims must
make it clear what subject matter they encompass.”)
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the specification as it would be
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Application 11/702,349
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interpreted by one of ordinary skill in the art. See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As indicated by
Appellants, one of ordinary skill in the art would understand from
paragraphs [0021] and [0023] of the Specification in combination with
Figures 6 and 7 that the tip of the strake is at the “free edge.” In this
instance, we conclude that one of ordinary skill in the art would understand
that “the tip” in claim 16 refers to the portion of the strake distant from the
structure in a similar fashion as “the end” recited in claim 1. Thus, within
the context of claim 16, it is clear what is meant by the term “the tip” to one
of ordinary skill in the art. Accordingly, we do not sustain the rejection of
claim 16 as indefinite.
Rejection of Claims 1-12 as Unpatentable over Richter and Egolf
Regarding claim 1, Appellants argue that the “functionality of helical
strakes in the present invention is to disrupt the lengthwise coherence of
vortices shed from a cylindrical object,” while “Egolf only teaches the use of
a structure at the tip of a wing blade.” App. Br. 4-5. Although this may be
true, Appellants’ argument amounts to attacking the Egolf reference
individually rather than addressing the Examiner’s combination of the
Richter and Egolf references. “[O]ne cannot show non-obviousness by
attacking references individually where . . . the rejections are based on
combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference .... Rather, the test is what the combined teachings of [those]
references would have suggested to those of ordinary skill in the art.” Id. at
425.
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As the Examiner finds, Egolf recognizes that tip structures 16, 20
disrupt vortices created at the tip region of foil or blade 12. See Ans. 4
(citing Egolf, col. 3, l. 51 – col. 4, l. 2, figs. 1A-4); see also Egolf, col. 3, ll.
16-19. In the instant invention, although the tip structure is utilized over the
length of the strake, the principle of vortex reduction being employed is the
same as that taught by Egolf in that vortices are created at the tip region. See
Ans. 6. It does not seem to us to be beyond the ability of one of ordinary
skill in the art to adapt Egolf’s teaching of structures for vortex reduction to
the specific application of a strake as the Examiner has suggested. See In re
Jacoby, 309 F.2d 513, 516 (CCPA 1962) (an artisan must be presumed to
know something about the art apart from what the references disclose).
Regarding the recitation of the structure also being a “stiffener,” we
further agree with the Examiner that Egolf’s tip structure “functions as a
stiffening member by increasing the overall thickness of the end of the blade
to which said tip is attached.” Ans. 6. Accordingly, we sustain the rejection
of claim 1.
As to claims 2 and 3, Appellants argue that the stiffener/streamliner
needs to be “along the full length of the strake,” but do not state how this is
not met by the combination of Richter and Egolf. As shown in Egolf, the tip
structure runs along the entire width of the blade. See, e.g., Egolf, Fig. 4.
Therefore, the combination of Egolf with Richter would suggest utilizing
such structure along the entire edge where such vortices are created as
recited in claim 2. Likewise, if the structure is along the entire edge, it must
also be along a portion as recited in claim 3. As such, we sustain the
rejection of claims 2 and 3.
Regarding claims 4-6, Appellants merely state that the “required
shape of the streamliner and stiffener may depend upon the water and
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Application 11/702,349
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current conditions as well as the size of the structure and the strake on the
structure” (App. Br. 4-5), but do not state how the combination is deficient.
Further, Appellants’ argument is not commensurate with the scope of the
claim, which does not recite anything about stiffener/streamliner shape being
dependent upon water/current conditions, the size of the structure, and the
strake on the structure. App. Br. 5-6. The Examiner finds that the
“streamliner and stiffener [of Egolf] has a teardrop or partially circular
shape, as shown in Figure 3B.” Ans. 4. This finding addresses the
limitations actually recited in claims 4-6 of an “enlarged tip,” “circular
shape,” and “tear drop shape,” respectively. Accordingly, we sustain the
rejections of claims 4-6.
Regarding claims 7 and 10, Appellants state that these claims are
merely a combination of features of claims 1 and 4 and claims 1 and 6,
respectively. App. Br. 6. Accordingly, because we sustain the Examiner’s
rejection of claims 1, 4, and 6 for the reasons discussed supra, we also
sustain the rejection of claims 7 and 10 for the same reasons.
Appellants provide no separate arguments with respect to claims 8, 9,
11, and 12 other than those provided with respect to claims 2 and 3. App.
Br. 6. As such, we sustain the rejection of claims 8, 9, 11, and 12 for the
reasons stated above with respect to claims 2 and 3.
Rejection of Claims 14-16 as Unpatentable over Horton
Each of claims 14-16 requires “a rigid block attached to each end of
the strake” that induces “tension in the strake in the spiral direction.” App.
Br. 11-12. The Examiner finds that gussets or stiffener plates 28 of Horton
amount to “a tension resisting support that is further comprised of a rigid
block.” Ans. 4-5. In Horton, there are two types of blocks (gussets or
stiffener plates 28): a first type of block (gusset or stiffener plate 28 around
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Application 11/702,349
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knee brace 24) that stiffens knee brace 24 against hull 104 and a second type
(gusset or stiffener plate 28 adjacent stanchion 14) that stiffens stanchion 14
against hull 104. See Horton, Figs. 5-6.
We note that the first type of block is not actually attached to strake
segment 12 of strake 10 except via knee brace 24, and the second type of
block is not located at the end of segment 20 of the strake 10 as claimed, but
is actually placed inwardly of the ends of strake segment 20. Id. It is not
entirely clear to which block (gusset or stiffener plate 28), i.e., the first type
or the second type, the Examiner refers, but neither appears to meet the
entirety of the language of claims 14-16.
Further, as Appellants point out, Horton’s “knee braces cannot
develop tension in the spiral direction” as claimed. App. Br. 7. See also
App. Br. 6-8. In neither the rejection nor the response to argument as
provided in the Answer does the Examiner make any finding that Horton
achieves the claimed “inducing tension in the strake in the spiral direction.”
As such, we cannot sustain the Examiner’s rejection of claims 14-16.
DECISION
For the above reasons, we REVERSE the indefiniteness rejection of
claim 16 and the rejection of claims 14-16 as unpatentable over Horton. We
AFFIRM the Examiner’s decision to reject claims 1-12 as unpatentable over
Richter and Egolf.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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