Saudi Arabian Oil Company

Patent Trials and Appeals Board

Apr 8, 2020

14495952 - (D) (P.T.A.B. Apr. 8, 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.
14/495,952 09/25/2014 Mari Hussain ALQAHTANI 0004159.005327 8347
35979 7590 04/08/2020
Bracewell LLP
P.O. Box 61389
Houston, TX 77208-1389
EXAMINER
LAMBE, PATRICK F
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
04/08/2020 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):
docketing@bracewell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARI HUSSAIN ALQAHTANI
____________

Appeal 2019-0052911
Application 14/495,9522
Technology Center 3600
____________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).

1 Our Decision references Appellant’s Specification (“Spec.,” filed Sept. 25,
2014), Appeal Brief (“Appeal Br.,” filed Feb. 1, 2019) and Reply Brief
(“Reply Br.,” filed July 1, 2019), and the Examiner’s Answer (“Ans.,”
mailed May 1, 2019) and Final Office Action (“Final Act.,” mailed
June 29, 2018).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Saudi Arabian Oil Company as the
real party in interest. Appeal Br. 2.
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We REVERSE. Pursuant to our authority under 37 C.F.R. § 41.50(b),
we enter a NEW GROUND OF REJECTION for claims 1–16 under
35 U.S.C. § 112(b) as indefinite.
CLAIMED INVENTION
Appellant’s claimed invention relates to “oil and gas production from
subsea gathering manifolds or wells using buoyancy.” Spec. ¶ 2.
Claim 1, 9, and 17 are independent. Claim 1 is representative of the
claimed subject matter:
1. A system for bringing produced oil and gas from a subsea
wellhead to a sea surface, the system comprising:
a cable loop having an upper end at or adjacent a sea
surface and a lower end below the sea surface, the loop rotatable
around a closed path;
a plurality of production vessels attached to the cable loop,
each production vessel having a hollow interior that can be filled
with seawater, to cause the production vessels to sink, the
plurality of production vessels each having an inlet pipe attached
thereto; and
a plurality of receivers in communication with a subsea
wellhead that receive production fluid from the subsea wellhead,
the plurality of receivers configured to engage the plurality of
production vessels and fill them with production fluid while
seawater in the production vessels is discharged from the
production vessels, the production fluid having a lower density
than ambient seawater, thereby causing the production vessels to
become buoyant, wherein the plurality of receivers are placed on
an elliptical rail that is concaved downward and are synchronized
to receive the production vessels as the production vessels arrive,
and to release the production vessels at the end of the elliptical
rail when the production vessels have been filled with the
production fluid.

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REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 103 as unpatentable over
Bokel (US 4,326,132, iss. Apr. 20, 1982), Loladze (WO 2013/030605 A2,
pub. Mar. 7, 2013), and Ninomiya (US 2013/0140755 A1, pub. June 6,
2013).
Claims 5 and 13 are rejected under 35 U.S.C. § 103 as unpatentable
over Bokel, Loladze, Ninomiya, and Rives (US 4,589,566, iss. May 20,
1986).

ANALYSIS
Indefiniteness - New Ground of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection against claims 1–16 under 35 U.S.C. § 112(b) as
indefinite.
The Federal Circuit has held that a claim is “indefinite when it
contains words or phrases whose meaning is unclear.” In re Packard, 751
F.3d 1307, 1314 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward,
2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the
approach for assessing indefiniteness approved by the Federal Circuit in
Packard).
Each of independent claims 1 and 9 recites that the claimed elliptical
rail is “concaved downward.” Appellant’s written description also refers to
elliptical rail 134 as “concaved downward.” Spec. ¶ 38. The written
description does not define the term “concaved downward.” Nor does it
otherwise describe the shape of the rail, or explain why it should have any
particular shape. Appellant’s drawings, however, do not depict the rail as
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“concaved downward.” Instead, the drawings repeatedly and consistently
depict elliptical rail 134 as concaved upward, i.e., a parabola that opens
upward, like a smile.3 See, e.g., Figs. 1, 4–13. Due to this inconsistency, the
meaning of the phrase “concaved downward” is unclear.
Therefore, we enter a new ground of rejection of independent claims 1
and 9, and their dependent claims 1–8 and 10–16, under 35 U.S.C. § 112(b)
as indefinite.
Obviousness4
In rejecting independent claims 1, 9, and 17 under 35 U.S.C. § 103 as
unpatentable over Bokel, Loladze, and Ninomiya, the Examiner
acknowledges that the combination of Bokel and Loladze does not teach that
“the plurality of receivers are placed on an elliptical rail,” as recited in claim
1, and similarly recited in independent claims 9 and 17. See Final Act. 3–4,
6–7, 9–10. The Examiner applies Ninomiya to cure this deficiency. Id. at 4,
7, 10.
Bokel relates to a power generating apparatus that uses an injection of
air under a mass of water to exert a buoyant force to drive a power
generator. Bokel 1:4–10. The apparatus includes, in part, tall tank 11

3 See, e.g., CliffsNotes, Calculus, available at:
https://www.cliffsnotes.com/study-guides/calculus/calculus/applications-of-
the-derivative/concavity-and-points-of-inflection (last accessed March 31,
2020) (explaining that, geometrically, a function is “concave upward” if it
looks like a parabola that opens upward, and “concave downward” if it looks
like a parabola that opens downward).
4 Because we can decide the obviousness rejections without engaging in
speculation or assumptions as to the scope of the claims regarding the phrase
“concaved downward,” as recited in claims 1 and 9, we do so in the interest
of economy.
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containing deep body of water 13, base 12 on which tank 11 stands, and
endless chain 18 extending around an upper gear and a lower gear. Id.
at 1:54–64, Fig. 1. Two rows 19 of buckets 20 are mounted along chain 18
in a rigid manner. Id. at 1:64–67, Fig. 2. Each bucket has a tapered closed
end and an open end, and each bucket is aligned such that its open end faces
a closed end of an adjacent bucket. Id. at 1:64–2:4. A pair of air
injectors 23 protrude upwardly from base 12, each injector aligning with one
row 19 of buckets to inject air upwardly inside an open end of the lowermost
bucket, causing a flap valve to close. Id. at 2:5–10. At the bottom of the
chain, air from air injector 23 replaces water in the bucket, adding sufficient
buoyancy for the buckets to rise upwardly in the water, carrying the chain
therewith and rotating the gears. Id. at 2:10–17, Fig. 1. At the top of the
chain, the bucket inverts upright (i.e., with the open end facing up and the
closed end facing down) as they travel around the upper gear, causing the
flap valve to open, and the bucket to fill with sea water. Id. at 2:17–20.
Loladze pertains to transporting underground resources from a point
of extraction to a platform that is either on the water surface or submerged a
certain depth. Loladze 1. Loladze uses containers 7 attached to separate
guiding cables 6 to transport oil from point of filling 1 to docking site 8. Id.
at 4. At point of filling 1, container 7 attaches to container catcher 5 at the
platform, a nozzle (a tip of branch 4) enters valve 20 and fills a container
with extracted material, such as oil. Id. at 4; see also id. at 3 (identifying
components), Fig. 1. Oil-filled container 7 acquires a positive buoyancy,
which causes it to rise along with guiding cables 6 to docking area 8. Id.
Ninomiya describes passing apparatus 30 for use in a manufacturing
line for disposable diapers. Ninomiya ¶ 100. Diapers are formed by joining
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various components to a base material that moves continuously along the
manufacturing line. Id. ¶ 107. Ninomiya’s passing apparatus 30 handles
one of the processes, namely, an operation by which absorbent main body 10
bridges over, and is fixed to, band members 20, 24 of the diaper, forming an
H-shaped, semi-finished diaper. Id. ¶¶ 107, 110, Figs. 1A, 1C.
Passing apparatus 30 includes a plurality of holding pads 35 that orbit
in a clockwise horizontal, elliptical orbit Tr defined by first elliptical rail 50.
Id. ¶¶ 112, 123 Fig. 2A. Holding pad 35 at position Qin on elliptical orbit Tr
receives a single sheet of absorbent main body 10. Id. ¶ 113. Holding pad
35 revolves along orbit Tr to discharge position Qout, horizontally spins to
change the orientation of the absorbent main body 10, and discharges
absorbent main body 10 to attach absorbent main body 10 to band member
20a, 24a. Id. ¶¶ 114–15. A second rail 62 engages second arm member 64
to spin holding pad 35. Id. ¶ 134.
The Examiner finds that Bokel discloses many of the limitations
recited in each of the independent claims, although not the “fluid used to
provide positive buoyancy.” Final Act. 3, 6, 8–9. The Examiner, thus,
modifies the “system of Bokel to be filled with production fluid instead of
air,” as taught by Loladze, as a simple substitution of one known element for
another. Id. at 4, 7, 9.
Turning to Ninomiya, the Examiner finds that this reference
“discloses placing receivers (holding pads 35) on an elliptical rail (62) that is
concave down (Figure 4) and synchronizing the receiving and releasing of
objects. The release happens at the end of the elliptical rail (see Figure 9;
paragraph 0166 describing elliptical segments of rail).” Final Act. 4, 7, 10.
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The Examiner determines that it would have been obvious to one of ordinary
skill in the art
to modify the Bokel-Loladze Combination by substituting in the
rail/receivers of Ninomiya as known work in one field of
endeavor may prompt variations of it for use in a different field
based on design incentives as one of ordinary skill in the art
would recognize the cable loop of the Bokel-Loladze
Combination would benefit from the design of the rails in
Ninomiya to have a smoother transportation of the vessels to
make a secure engagement between the parts.
Id. In the Answer, the Examiner further explains that there is a “design
incentive” for a “smooth and secure handling of the production vessels as
they are filled with the production fluid” to reduce damage to the
environment by accidents that release production fluid into the water.
Ans. 8 (citing Loladze 1). The Examiner reasons that “[b]y utilizing the rails
of Ninomiya, the production vessels of Bokel that travel in the loop could be
secured while being filled with production fluid.” Id.
Yet, as pointed out by Appellant (see Appeal Br. 6), Bokel teaches
that the fluid injector is stationary.5 See, e.g., Bokel, Fig. 3 (depicting
stationary air injector 23 attached at base 12). It is unclear, and the
Examiner does not adequately explain, why one of ordinary skill in the art
would be motivated to modify the stationary injector of Bokel and Loladze
so that it movably attaches to an elliptical rail, such as Ninomiya’s
rails 50, 62. It also is unclear how this modification would provide for
smooth and secure handling. If anything, it would seem to reduce the

5 Loladze is only relied upon for injecting production fluid (e.g., oil), instead
of air. Final Act. 4, 6–7, 9. However, Loladze also discloses that the
injector is stationary. See Loladze, Fig. 1 (showing container 7 filling from
the end of branch 4 at container catcher 5).
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precision of the injectors, leading to more accidents. See Bokel 2:5–10 (“A
pair of computerized air injectors 23 protrude upwardly, at an inclined angle
from the base, each injector aligning with one of the rows 19, so that air
from the nozzle of the injector bubbles upwardly in a precise area.”).
In the Answer, the Examiner provides an additional, alternative
rationale for the proposed modification. See Ans. 9. Specifically, the
Examiner reasons that the proposed modification would have been obvious
to one of ordinary skill in the art “as the substitution of [one] known element
for another to obtain predictable results.” Id. (citing MPEP § 2143(I)(B)).
However, we disagree that one of ordinary skill in the art would have
deemed holding pads mounted to orbit an elliptical rail, as taught by
Ninomiya, as a suitable substitute with a stationary attachment of an injector
to a base, as taught by Bokel and Loladze, or that such substitution would
have been predictable.
Here, the Examiner has not articulated reasoning with some rational
underpinning to explain why one of ordinary skill in the art would have
combined the teachings of Bokel, Loladze, and Ninomiya to result in the
claimed invention, as recited in independent claims 1, 9, and 17. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2006). Instead, the Examiner
appears to be basing the rejection on improper hindsight reasoning.
Therefore, we do not sustain the rejection of independent claims 1, 9,
and 17, and their dependent claims 1–8, 10–16, and 18–20, under 35 U.S.C.
§ 103 as unpatentable over Bokel, Loladze, and Ninomiya.
Claim 5 and claim 13 ultimately depend from independent claims 1
and claim 9, respectively, and are additionally rejected as unpatentable under
35 U.S.C. § 103 over Bokel, Loladze, Ninomiya, and Rives. Final Act. 10–
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11. However, the Examiner relies on Rivers for teaching a safety lock (see
id.), and thus, Rivers does not cure the deficiency of the rejection set forth
above with respect to independent claims 1 and 9.
Accordingly, we do not sustain the rejections of claims 5 and 13 under
35 U.S.C. § 103 as unpatentable over Bokel, Loladze, Ninomiya, and Rives.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–20 103 Bokel, Loladze,
Ninomiya
1–20
5, 13 103 Bokel, Loladze,
Ninomiya, Rives
5, 13
1–16 112(b) Indefiniteness 1–16
Overall
Outcome
1–20 1–16

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R. 41.50(b)