10535792 (B.P.A.I. May. 22, 2012)

Ex Parte de Kerdanet

Board of Patent Appeals and InterferencesMay 22, 2012

10535792 (B.P.A.I. May. 22, 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. 10/535,792 05/23/2005 Tegwen Bertrand Marie de Kerdanet 24749US (Acergy-53) 9272 83942 7590 05/22/2012 Levy & Grandinetti P.O. Box 18385 Washington, DC 20036 EXAMINER MAYO-PINNOCK, TARA LEIGH ART UNIT PAPER NUMBER 3671 MAIL DATE DELIVERY MODE 05/22/2012 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 TEGWEN BERTRAND MARIE MIORCEC DE KERDANET ____________________ Appeal 2010-002793 Application 10/535,792 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, KEN B. BARRETT, and CHARLES N. GREENHUT, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-002793 Application 10/535,792 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of installing an elongate subsea structure having a top, wherein said subsea structure is provided with a plurality of buoyancy modules, said buoyancy modules being slidably mounted to said subsea structure, such that when said subsea structure is deployed at sea in a substantially vertical orientation said buoyancy modules are free to adjust their positions up or down said subsea structure by sliding, the buoyancy force of each buoyancy module acting upon the buoyancy module above it rather than locally along the structure, and the cumulative buoyancy force from said buoyancy modules acting substantially against said top of said subsea structure. Evidence The Examiner relied on the following evidence in rejecting the claims on appeal: Head US 6,276,456 B1 Aug. 21, 2001 Appeal 2010-002793 Application 10/535,792 3 Rejections The Examiner rejected claims 1-3 and 8-18 under 35 U.S.C. § 102(b) as anticipated by Head. The Examiner rejected claims 4-7 under 35 U.S.C. § 103(a) as unpatentable over Head. OPINION The rejections before us in this appeal are predicated in part on the Examiner’s finding that Head’s buoyancy modules (foam elements 54) are slidably mounted to said subsea structure [i.e., tube 50] such that when said subsea structure is deployed at sea in a substantially vertical orientation said buoyancy modules are free to adjust their positions up or down said subsea structure by sliding, the buoyancy force of each buoyancy module acting upon the buoyancy module above it rather than locally along the structure, and the cumulative buoyancy force from said buoyancy modules acting substantially against said top of said subsea structure. Ans. 3. Head discloses that “foam 54 elements [sic] are protected by titanium plates [52],”1 which are “secured to the tube 50 by a series of straps 56 disposed along the length of the tube.” Col. 8, ll. 52-55. Head further discloses that the titanium plates 52 and foam elements 54 are joined to each other and to the plates and foam elements above and below by a strip 57 of flexible material, and that the strips (and the plates 52 and foam elements 54 1 Head labels the titanium plates with the reference numeral 52 in figures 13 and 13A, and labels the plates with the reference numeral 62 in figure 14. Head uses both numerals in the description of figures 13 and 14 in columns 8 and 9. We use the numeral 52 to denote the titanium plates. Appeal 2010-002793 Application 10/535,792 4 joined to the strips) “are secured to the tube by straps 56 between the plates 52.” Col. 8, l. 63 – col. 9, l. 4; figs. 13, 13A, 14. We have carefully considered the Examiner’s reasoning on pages 8-12 of the Answer in support of the finding that Head’s foam elements are “slidably” mounted and “free to adjust their positions up or down [the tube 50] by sliding,” and the teachings of Head directed to the securement of the foam elements 54 to the tube 50. We determine that the Examiner’s finding requires speculation as to the tightness of the straps 56 relative to the buoyancy forces that would be experienced in a subsea deployment. Thus, the Examiner has failed to show a sound basis for finding that Head’s straps 56 secure the plates 52, foam elements 54, and flexible strips 57 in such a manner that the foam elements 54 are “slidably mounted” to the tube 50, such that when the tube 50 is deployed at sea in a substantially vertical orientation the foam elements 54 are free to adjust their positions up or down the tube 50 by sliding, with the buoyancy force of each foam element 54 acting upon the foam element 54 above it rather than locally along the tube 50, and the cumulative buoyancy force from foam elements 54 acting substantially against the top of the tube 50, as required in claim 1. We do not sustain the rejections. DECISION The Examiner’s decision rejecting claims 1-18 is reversed. REVERSED Klh