Ex Parte Wilson

Patent Trials and Appeals Board

Jan 23, 2019

13691076 - (D) (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/691,076 11/30/2012
28827 7590 01/25/2019
GABLE & GOTW ALS
100 WEST FIFTH STREET, 10TH FLOOR
TULSA, OK 74103
FIRST NAMED INVENTOR
Michael W. N. Wilson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
009044-00008 1052
EXAMINER
TROUTMAN, MATTHEW D
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
01/25/2019 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):
iplaw@gablelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL W. N. WILSON
Appeal2018-004741
Application 13/691,076
Technology Center 3600
Before LINDA E. HORNER, JAMES P. CALVE, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 27-33. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal2018-004741
Application 13/691,076
CLAIMED SUBJECT MATTER
Claim 27 is the sole independent claim on appeal, and claims 28-33
depend from claim 27. Claim 27 is reproduced below:
27. A method of clearing boulders from a path on a seabed
comprising the steps of:
positioning a plow having a forward skid and aft port and
starboard moldboards bow-forward in a direction of an initial
seabed path with the skid and moldboards on a floor of the
seabed; and
propelling the plow along the initial seabed path to cause
of the moldboards to clear boulders from the initial seabed path
to the port and starboard sides of the plow.
REJECTIONS
1. Claims 27-31 are rejected under 35 U.S.C. § 103 as being
unpatentable over Journal (A. R. Schultz and R. J. Brown, XP-001334447,
492 Oil and Gas Journal - vol. 79, no. 6, 77-80, published Feb. 1981) and
Wharton (US 4,245,927, issued Jan. 20, 1981).
2. Claims 32 and 33 are rejected under 35 U.S.C. § 103 as being
unpatentable over Journal, Wharton, and Ecosse Subsea Systems, SCAR pre-
cut trenching plough YouTube video, https://www.youtube.com/watch?x-yt-
ts=1421914688&v=clPyXqHq6Yw&x-yt-cl=84503534#t=19, posted Nov.
1, 2010 1.
OPINION
The Examiner finds that Journal teaches the plow recited in method
claim 27, but "is silent as to the use of the underwater plow and therefore
1 The web address for the YouTube video referenced by the Examiner does
not appear to be correct, as it does not direct one to a trenching plough
video.
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Appeal2018-004741
Application 13/691,076
lacks the explicit teaching of propelling the plow along the seabed to move
boulders out of the path of the plow." Final Act. 2. The Examiner reasons
that it would have been obvious to use Journal's plow to clear boulders
based on Wharton's teaching that "it is old and well known in the art to
utilize an underwater plow for moving boulders out of a desired path on the
seabed." Id. at 3 ( citing Wharton 5: 10-2 0 ).
Appellant responds that "the Examiner cites no evidence that
JOURNAL's fixed and/or floating moldboards travel on the floor of the
seabed." Appeal Br. 9. Appellant contends, for example, that JOURNAL
and Wharton are trenching plows which were never used to clear boulders.
Id. at 16.
The Examiner attempts to address Appellant's contentions, asserting
that even if Journal's plow is a trenching plow, "this does not prevent the
plow of JOURNAL from being capable of clearing boulders." Ans. 4. The
Examiner explains that "the combination as a whole is viewed to constitute a
'boulder clearing plow' as Wharton teaches wherein it is known to use an
underwater plow for clearing boulders." Id.
Wharton describes an option of "a skeleton plough ... to remove
boulders" that "could be provided at the front of the skids." Wharton 5: 15-
18. The Examiner does not propose any modification to the plow disclosed
in Journal. Whether Wharton discloses the option of including additional
structure on its plow for boulder clearing does not mean one skilled in the art
would have found it obvious to use the particular plow disclosed in Journal
in the manner recited in the method of claim 27. The preponderance of the
evidence before us does not support the Examiner's assertion that the
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Appeal2018-004741
Application 13/691,076
particular plow disclosed in Journal, without modifications, would be used
to clear boulders.
For at least this reason, we do not sustain the Examiner's decision to
reject claim 27, or claims 28-33, which depend from claim 27.
DECISION
We REVERSE the Examiner's decision to reject claims 27-33 as
unpatentable under 35 U.S.C. § 103.
REVERSED
4