Ex Parte Allen et al

Board of Patent Appeals and Interferences

Jul 11, 2012

11420838 (B.P.A.I. Jul. 11, 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.
11/420,838 05/30/2006 Donald Wayne ALLEN TH2876 (US) 1692
23632 7590 07/11/2012
SHELL OIL COMPANY
P O BOX 2463
HOUSTON, TX 772522463
EXAMINER
OLSON, LARS A
ART UNIT PAPER NUMBER
3617
MAIL DATE DELIVERY MODE
07/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD WAYNE ALLEN, LI LEE,
RAGHUNATH GOPAL MENON, and RACHEL ANNA WORTHEN
____________

Appeal 2010-000149
Application 11/420,838
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Donald Wayne Allen et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejection of claims 1-14. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-000149
Application 11/420,838

2
The Claimed Subject Matter
Independent claims 1 and 10, reproduced below, with emphasis
added, are representative of the subject matter on appeal.
1. A system for reducing drag and/or vortex
induced vibration of a structure, the system
comprising:
a fairing defining a plurality of perforations,
wherein the fairing is suitable for placement
around the structure, the perforations defining a
porosity of the fairing of at least 1%,
wherein the fairing comprises a chord to
thickness ratio of at least 1.1.

10. A method for modifying a structure subject
to drag and/or vortex induced vibration, said
method comprising:
positioning at least one fairing around the
structure, wherein the at least one fairing defines a
plurality of perforations, the perforations defining
a porosity of the fairing of at least 1%,
wherein the at least one fairing comprises a
chord to thickness ratio of at least 1.1.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 1-11, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shu (US 6,644,894 B2, issued Nov. 11, 2003). Final Rej.
2-3.1
Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shu and McMillan (US 5,984,584, issued Nov. 16, 1999). Final Rej. 3-4.

1 Since the Examiner did not set forth the rejections in the Examiner’s
Answer, we refer to the Final Rejection mailed June 4, 2008 for the
Examiner’s rejections.
Appeal 2010-000149
Application 11/420,838

3
OPINION
At the outset, we note that Appellants have conflicting statements in
their Brief as to whether the rejections of dependent claims 2-9 and 11-14
are being appealed. More particularly, at places in the Brief, Appellants
specifically state that “[c]laims 2-9 and 11-14 are not being appealed” and
“[t]he rejections of Claims 2-9 and 11-14 are not being appealed.” See Br. 2
and 3. However, Appellants also state that “[d]ependent claims 2-9 are
allowable for at least the same reasons as allowable Claim 1” and
“[d]ependent claims 11-14 are allowable for at least the same reasons as
allowable Claim 10.” Id. As it appears that Appellants are arguing the
dependent claims based upon the outcome of the independent claims, we
will treat the rejections of dependent claims 2-9 and 11-14 as being appealed
by Appellants.
Obviousness based on Shu
Claims 1-9
The Examiner finds that Shu substantially discloses the subject matter
of independent claim 1, except that Shu fails to explicitly disclose the fairing
has “a chord to thickness ratio of at least 1.1” since Shu’s fairing (buoyancy
member 103) is circular in cross-section and therefore, has a chord to
thickness ratio equal to 1.0. Final Rej. 2-3 and Ans. 3. However, the
Examiner alleges that “[t]he use of a fairing having a specific chord to
thickness ratio would be considered by one of ordinary skill in the art to be a
design choice based upon the required strength of said fairing.” Final Rej. 3.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art “to utilize a fairing having a specific chord to thickness ratio
in combination with the system and method for reducing drag on a structure
Appeal 2010-000149
Application 11/420,838

4
as disclosed by Shu . . . for the purpose of providing a fairing with improved
strength for reducing drag on a structure.” Id.
Appellants argue that in contrast to the subject matter of “a fairing
compris[ing] a chord to thickness ratio of at least 1.1” of independent claim
1, “Shu teaches a riser pipe 105 with buoyancy [member] 103 with fluid
passages [members] 104,” wherein the “circular riser pipe and buoyancy
[member] would have a chord to thickness ratio of 1.0.” Br. 3. Thus,
Appellants contend that “[t]here is no teaching or suggestion in Shu to use a
fairing or to modify a fairing having a chord to thickness ratio of at least 1.1
with perforations.” Id.
We agree with Appellants. Shu discloses a riser pipe 105 surrounded
by a circular cross-section buoyancy member 103 having a chord to
thickness ratio of 1.0 (see Shu, Figures 1-4 and 6), as acknowledged by both
Appellants (see App. Br. 3, ll. 17-19) and the Examiner (see Ans. 3, ll. 19-
20). Although the Examiner concludes that it would have been obvious to
one of ordinary skill in the art “to utilize a fairing having a specific chord to
thickness ratio . . . for the purpose of providing a fairing with improved
strength for reducing drag on a structure” (Final Rej. 3), the Examiner has
not articulated how Shu’s circular cross-section buoyancy member 103
would be modified to attain a chord to thickness ratio of 1.1. It appears that
in order to attain a chord to thickness ratio of greater than 1.0, Shu’s
buoyancy member 103 would have to be modified to change the cross-
sectional shape from circular to some other shape in cross-section, such as
teardrop-shaped, wherein the chord length is slightly longer than the
thickness length. Since Shu does not disclose any other cross-sectional
shape for its buoyancy member 103 other than circular and since the
Appeal 2010-000149
Application 11/420,838

5
Examiner has failed to discuss modifying Shu’s buoyancy member 103 by
changing the cross-sectional shape from circular to another shape having a
longer chord than thickness, we are not persuaded that it would have been
obvious to one of ordinary skill in the art to modify Shu’s fairing (buoyancy
member 103 having fluid passage members 104) to have a chord to
thickness ratio of at least 1.1.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2-9 dependent thereon, under 35 U.S.C.
§ 103(a) as unpatentable over Shu.
Claims 10, 11, 13, and 14
The Examiner makes similar findings to those discussed above with
respect to independent claim 1 and Appellants make the same argument and
contention. Thus, for the same reasons as discussed supra with respect to
independent claim 1, we do not sustain the Examiner’s rejection of
independent claim 10, and claims 11, 13, and 14 dependent thereon, under
35 U.S.C. § 103(a) as unpatentable over Shu.
Obviousness based on Shu and McMillan
As McMillan fails to cure the deficiency of Shu, for the same reasons
as discussed supra, we do not sustain the rejection Examiner’s rejection of
claim 12 under 35 U.S.C. § 103(a) as unpatentable over Shu and McMillan.

DECISION
We reverse the Examiner’s decision to reject claims 1-14.

REVERSED

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