DeepSea Power & Light LLC

Patent Trials and Appeals Board

Mar 14, 2022

2021001657 (P.T.A.B. Mar. 14, 2022)

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. 16/000,635 06/05/2018 Eric M. Chapman DEEP 19-057-201 3625 13235 7590 03/14/2022 Steven C. Tietsworth 3855 Ruffin Road San Diego, CA 92123 EXAMINER DANG, PHILIP ART UNIT PAPER NUMBER 2488 NOTIFICATION DATE DELIVERY MODE 03/14/2022 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): steven.tietsworth@seescan.com susan.hammons@seescan.com tietsworth@cox.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIC M. CHAPMAN, MARK S. OLSSON, and JON E. SIMMONS ____________ Appeal 2021-001657 Application 16/000,635 Technology Center 2400 ____________ Before ELENI MANTIS MERCADER, LARRY J. HUME, and CATHERINE SHIANG, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-27, which are all the claims pending and rejected in the application. Appeal Br. 16-19 (Claims App.).2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies SeeScan, Inc. as the real party in interest. Appeal Br. 1. 2 The Examiner’s objection to claims 7-9, 14, 15, and 26 (Non-Final Act. 32) is a petitionable matter. As a result, the objection is not before us. Appeal 2021-001657 Application 16/000,635 2 STATEMENT OF THE CASE Introduction The disclosed and claimed invention relates to “optical enclosures including dome ports, dome support rings, and/or housings including features to enhance strength and durability to better survive repeated cycling between low and high pressures in deep ocean or other high exterior pressure environments.” Spec. ¶ 2. In particular, [e]nclosures for deep ocean or other high exterior pressure environment including a dome window with an angular measurement of between 164 and 178 degrees, a structure housing, a dome support ring, and a compliance material positioned between the dome support ring and housing are disclosed. Spec. Abstr. Independent claim 1 is exemplary: 1. A submersible optical enclosure for use in high pressure environments, comprising: a housing having a hollow interior sized to accommodate an electronic device comprising one or more of an electronic light and an imaging device; a transparent pressure bearing substantially dome shaped window mechanically coupled to the housing, having an angular measurement of between approximately 164 degrees and 178 degrees and sized correspondingly to the electronic device to allow light in to or out of the housing interior for lighting or imaging; a dome support ring positioned between the housing and window having opposite annular faces that are substantially planar and parallel; a compliance material layer positioned between the annular dome support ring and the transparent pressure bearing window; a coupling element that secures the housing, dome support ring, and port window together; and Appeal 2021-001657 Application 16/000,635 3 one or more water-tight seals to block water entry into the housing interior. Appeal Br. 16 (Claims App.). References and Rejections3 Claims Rejected 35 U.S.C. § References 1-26 112(b) Indefiniteness 21 112(b) Indefiniteness 1-6, 10-13, 16, 17, 19, 25, 27 103 Olsson (US 9,416,957 B2, iss. Aug. 16, 2016), Schofield (US 6,690,268 B2, iss. Feb. 10, 2004) 18, 23 103 Olsson, Schofield, Klocek (US 6,083,583, iss. July 4, 2000) 20, 21 103 Olsson, Schofield, Goodrich (US 4,227,775, iss. Oct. 14, 1980) 22 103 Olsson, Schofield, Tsai (US 6,592,817 B1, iss. July 15, 2003) 24 103 Olsson, Schofield, Tsai, CN 103449718 (CN 103449718 B, pub. Dec. 18, 2013) (as translated) 3 Throughout this opinion, we refer to the (1) Non-Final Office Action dated July 1, 2019 (“Non-Final Act.”); (2) Appeal Brief dated August 3, 2020 (“Appeal Br.”); (3) Examiner’s Answer dated November 5, 2020 (“Ans.”); and (4) Reply Brief dated January 5, 2021 (“Reply Br.”). Appeal 2021-001657 Application 16/000,635 4 ANALYSIS Indefiniteness I The Examiner determines claims 1-26 are indefinite with respect to the claim limitation “having an angular measurement of between approximately 164 degrees and 178 degrees,” because the “relative term ‘approximately’ in this limitation is vague and unclear.” Non-Final Act. 2. We disagree. “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112(b). We apply the indefiniteness test approved by In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) (per curiam): “[a] claim is indefinite when it contains words or phrases whose meaning is unclear,” and “claims are required to be cast in clear-as opposed to ambiguous, vague, indefinite-terms.” See Packard, 751 F.3d at 1310, 1313; Ex parte McAward, Appeal No. 2015- 006416, 2017 WL 3669566, at *4-6 (PTAB Aug. 25, 2017) (precedential) (explaining that due to different approaches to indefiniteness before the PTAB and the courts, the PTAB continues to follow Packard after the Supreme Court’s Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) decision). [W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). Appeal 2021-001657 Application 16/000,635 5 Packard, 751 F.3d at 1311. In this case, Appellant argues-and we agree-the term “approximately” does not automatically render the claims indefinite. See Appeal Br. 5-6. The Examiner does not respond to that argument. Nor does the Examiner provide adequate analysis articulating why the term “approximately” renders the claims indefinite in this case. In the Answer, the Examiner determines “[i]t is not clear to readers from the claim language that “an angular measurement of what part, or what section, or what element of the substantially dome shaped window is between approximately 164 degrees and 178 degrees.” Ans. 34. Appellant argues, and we agree, one skilled in the art would understand the limitation “having an angular measurement of between approximately 164 degrees and 178 degrees” refers to the angle illustrated in Figure 2 of the Specification. See Reply Br. 2-3. Therefore, one skilled in the art would understand the meaning of the limitation “having an angular measurement of between approximately 164 degrees and 178 degrees.” In short, the Examiner has not shown the meaning of the limitation is unclear to one skilled in the art. See Packard, 751 F.3d at 1310. Because the Examiner has not provided sufficient basis for the rejection, we reverse the Examiner’s rejection of claims 1-26 under 35 U.S.C. § 112(b). II The Examiner determines claim 21 is indefinite because “[t]here is insufficient antecedent” for the recited “the acid etching.” Non-Final Act. 3 (emphases omitted). Appeal 2021-001657 Application 16/000,635 6 Appellant does not contest the indefiniteness rejection of claim 21. Thus, we summarily affirm the Examiner’s 35 U.S.C. § 112(b) rejection of claim 21. See 37 C.F.R. § 41.37(c)(1)(iv) (2019) (“any arguments . . . not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal”); In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (“We interpret the Patent Office to be arguing that Google’s failure to raise its lexicography arguments, inadvertent or not, compels a finding of forfeiture. We agree.”).4 Obviousness We have reviewed the Examiner’s rejection in light of Appellant’s contentions and the evidence of record. We concur with Appellant’s contention that the Examiner has not provided the requisite rationale for combining the teachings of Olsson and Schofield to reject claim 1. See Appeal Br. 14-15; Reply Br. 12-13. The Examiner finds Olsson does not explicitly teach “having an angular measurement of between approximately 164 degrees and 178 degrees,” but finds Schofield teaches that limitation. Non-Final Act. 8-9. The Examiner determines one skilled in the art would have modified Olsson’s system to incorporate Schofield’s feature, because “the 4 If prosecution reopens, we leave it to the Examiner to determine whether claim 21 complies with 35 U.S.C. § 112(d) (“a claim in dependent form shall . . . specify a further limitation of the subject matter claimed”). We leave it to the Examiner to determine whether the limitation of claim 21 changes the structure of the enclosure (whether there is some mechanical advantage or other structural effect imparted by using a particular type of etching acid). Appeal 2021-001657 Application 16/000,635 7 combination of Olson with Schofield will enable the system to enhance the view of a viewer.” Id. at 9; see also Ans. 44-46. We disagree. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (citation omitted); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“Without any explanation as to . . . why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against. . . . [W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” (citation omitted)). Further, the U.S. Patent and Trademark Office (“USPTO”) “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made” and that articulation requirement “appl[ies] with equal force to the . . . motivation to combine analysis.” In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (citation omitted). When “motivation to combine . . . is disputed,” the USPTO “must articulate a reason why a PHOSITA [person having ordinary skill in the art] would combine the prior art references.” Id. In this case, we agree with Appellant that the Examiner has not provided the requisite rationale for combing the teachings of Keller and Higgins. See Appeal Br. 14-15; Reply Br. 12-13. In particular, the Examiner’s assertion that “the combination of Olson with Schofield will Appeal 2021-001657 Application 16/000,635 8 enable the system to enhance the view of a viewer” (Non-Final Act. 9) is insufficient, as the Examiner has not adequately explained why modifying Olsson’s system to incorporate Schofield’s feature of “having an angular measurement of between approximately 164 degrees and 178 degrees” would “enable the system to enhance the view of a viewer” (Non-Final Act. 9). The connection between the proposed combination and “enhance[ing] the view of a viewer” is not readily apparent, and the Examiner has not adequately explained why such a connection exists. Further, claim 1 recites “[a] submersible optical enclosure for use in high pressure environments” (emphases added), and the Examiner has not explained why a viewer would be in a high-pressure submersible optical enclosure, such as a high-pressure optical enclosure in deep ocean. See Spec. ¶ 2 (“this disclosure relates to optical enclosures . . . including features to enhance strength and durability to better survive repeated cycling between low and high pressures in deep ocean or other high exterior pressure environments”) (emphases added). As a result, the Examiner has not provided “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” as required by KSR. See KSR, 550 U.S. at 418. Because the Examiner fails to provide the requisite rationale for combining the teachings of Olsson and Schofield to reject claim 1, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1, and independent claim 27 for the same reason. We also reverse the Examiner’s rejections of corresponding dependent claims 2-6, 10-13, and 16-25. Although the Examiner cites additional references for rejecting some dependent claims, the Examiner has not shown Appeal 2021-001657 Application 16/000,635 9 the additional references overcome the deficiency discussed above in the rejection of claim 1. We note Appellant raises additional arguments about the obviousness rejections. Because we find the identified issue is dispositive of the appeal with respect to the obviousness rejections, we do not address the additional arguments. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (an administrative agency’s “judicious use of a single dispositive issue approach . . . can . . . save . . . unnecessary cost and effort”). CONCLUSION We reverse the Examiner’s decision rejecting claims 1-26 under 35 U.S.C. § 112(b). We summarily affirm the Examiner’s decision rejecting claim 21 under 35 U.S.C. § 112(b). We reverse the Examiner’s decision rejecting claims 1-6, 10-13, 16- 25, and 27 under 35 U.S.C. § 103. Because we affirm at least one ground of rejection with respect to claim 21, we affirm the Examiner’s decision rejecting claim 21. See 37 C.F.R. § 41.50(a)(1). Appeal 2021-001657 Application 16/000,635 10 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-26 112 Indefiniteness 1-26 21 112 Indefiniteness 21 1-6, 10-13, 16, 17, 19, 25, 27 103 Olsson, Schofield 1-6, 10-13, 16, 17, 19, 25, 27 18, 23 103 Olsson, Schofield, Klocek 18, 23 20, 21 103 Olsson, Schofield, Goodrich 20, 21 22 103 Olsson, Schofield, Tsai 22 24 103 Olsson, Schofield, Tsai, CN 103449718 24 Overall Outcome 21 1-20, 22-27 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). See 37 C.F.R. § 41.50(f). AFFIRMED IN PART