Ex Parte MACQUIN et al

Patent Trial and Appeal Board

Sep 26, 2018

14194851 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/194,851 03/03/2014 Raphael MACQUIN
11171 7590 09/28/2018
Patent Portfolio Builders, PLLC
P.O. Box 7999
Fredericksburg, VA 22404
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.
0336-260-2/100474 6549
EXAMINER
MURPHY, DANIELL
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
Mailroom@ppblaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAPHAEL MACQUIN and KARINE DESRUES
Appeal2017-010324
Application 14/194,851
Technology Center 3600
Before BRANDON J. WARNER, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-9 and 11-20. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, CGG Services SA, which the Appeal Brief
identifies as the real party in interest. Br. 2.
2 In the Answer, the Examiner withdraws a number of rejections, including
all rejections pertaining to claim 10. See Ans. 3-5; Final Act. 8, 12-13, 40-
41. We do not consider the withdrawn rejections related to claim 10 as part
of this appeal.
Appeal2017-010324
Application 14/194,851
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "preventing deposits (bio-
fouling) on equipment ( e.g., streamers, head buoys, tail buoys, etc.) used
underwater for marine seismic surveys, and, more particularly, to pre-cut
skin sections configured to cover and thus, protect portions of the equipment
from fouling." Spec. ,r 2. Claims 1, 13, and 16 are independent. Claim 1 is
reproduced below.
1. A seismic equipment usable underwater for marine
seismic surveys, the seismic equipment comprising:
a first skin configured to separate an inside of the seismic
equipment from surrounding water when the seismic equipment
is submerged;
a removable second skin section configured to cover a
predetermined area of the first skin, the removable second skin
section including a flexible sheet; and
a reversible closure system configured to join edges of
the flexible sheet so that the removable second skin section
separates from the seismic equipment when the closure system
is opened.
Br. 17 (Claims App.).
THE REJECTIONS
The Examiner made a number of rejections in the Final Office Action
that were later withdrawn in the Examiner's Answer. See Final Act. 8-30;
Ans. 3-5. Appellant seeks review of the following rejections that remain
before us on appeal:
1. Claims 1, 11, and 13 under 35 U.S.C. § 112, second paragraph, as
indefinite.
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Application 14/194,851
2. Claims 1, 3, 4, 11-13, and 15 under 35 U.S.C. § I03(a) as
unpatentable over Harrick3 and Eyster. 4
3. Claims 2 and 14 under 35 U.S.C. § I03(a) as unpatentable over
Harrick, Eyster, and Weed. 5
4. Claim 5 under 35 U.S.C. § I03(a) as unpatentable over Harrick,
Eyster, and Xiong. 6
5. Claims 6 and 7 under 35 U.S.C. § I03(a) as unpatentable over
Harrick, Eyster, and Acatay. 7
6. Claim 8 under 35 U.S.C. § I03(a) as unpatentable over Harrick,
Eyster, Weed, and Vignaux. 8
7. Claim 9 under 35 U.S.C. § I03(a) as unpatentable over Harrick,
Eyster, and Bell. 9
8. Claims 16-20 under 35 U.S.C. § I03(a) as unpatentable over
Harrick, Eyster, and Hall. 10
9. Claims 4--8, 11, 15, and 16 under provisional nonstatutory double
patenting as being unpatentable over claims of U.S. Application
No. 13/964, 178.
3 U.S. Patent Pub. No. 2010/0278011 Al, published Nov. 4, 2010
("Harri ck").
4 U.S. Patent No. 8,541,439 B2, issued Sept. 24, 2013 ("Eyster").
5 U.S. Patent No. 7,842,288 B2, issued Nov. 30, 2010 ("Weed").
6 U.S. Patent Pub. No. 2008/0015298 Al, published Jan. 17, 2008
("Xiong").
7 U.S. Patent Pub. No. 2007/0166464 Al, published July 19, 2007
(" Acata y").
8 U.S. Patent Pub. No. 2010/0020644 Al, published Jan. 28, 2010
("Vignaux").
9 U.S. Patent No. 9,103,034 B2, issued Aug. 11, 2015 ("Bell").
10 U.S. Patent No. 5,217,176, issued June 8, 1993 ("Hall").
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Application 14/194,851
ANALYSIS
Double Patenting
Appellant devotes a single sentence of argument to the double
patenting rejection: "[s]ince U.S. Patent Application No. 13/964, 178 has not
been allowed, these rejections should be held in abeyance until one of the
applications is allowed." Br. 15. The Examiner responds by noting that "a
terminal disclaimer is required before any allowability can be indicated," as
indicated in the Final Office Action. Adv. Act. 2 (mailed Jan. 20, 2017).
The Examiner also noted that "Appellant has made no argument with regard
to the merit of the provisional rejection." Ans. 12.
We agree with the Examiner. Appellant's limited argument does not
address the merits of the rejection. The statement also fails to appreciate
that this application could not be allowed with the rejection pending and no
substantive response from Appellant, without the Appellant first filing a
terminal disclaimer. Moreover, the relief Appellant seeks on appeal-
abeyance of the rejection "until one of the applications is allowed"----does
not acknowledge that provisional nonstatutory double patenting rejections
should not be held in abeyance. See MPEP 804(I)(B)(l) ("As filing a
terminal disclaimer, or filing a showing that the claims subject to the
rejection are patentably distinct from the reference application's claims, is
necessary for further consideration of the [provisional] rejection of the
claims, such a filing should not be held in abeyance."); Br. 15. We therefore
sustain the rejection of claims 4--8, 11, 15, and 16 under provisional
nonstatutory double patenting. 11
11 We note that "[a] provisional double patenting rejection will be converted
into a double patenting rejection when the first application, which is the
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Application 14/194,851
Indefiniteness
The Examiner rejected claims 1 and 13 as indefinite because the
phrase "so that the removable second skin section separates from the seismic
equipment when the closure system is opened" introduces a temporal
consideration that lacks clarity. Final Act. 5. The Examiner found that a
reasonable interpretation of this phrase requires the removable second skin
to separate "as soon as the closure system is opened, that is, without any
further action on the part of the agent (person or machine) that opens the
closure system." Id. The Examiner found that another reasonable
interpretation "might allow for some small additional effort after opening the
closure system to effect separating the removable second skin section from
the seismic equipment." Id. at 6.
Appellant argues that the Examiner improperly "injects a temporal
dimension where the claim includes none." Br. 6. Appellant contends that a
person of ordinary skill in the art "would understand this feature as pointing
out that the removable second skin section does not separate from the
seismic equipment when the closure system is closed." Id.
We are not apprised of error in the indefiniteness rejection of claims 1
and 13. Appellant argues that the phrase merely means that the skin does
not separate when the closure system is closed, but the claim does not say
that. See Br. 6. As the Examiner found in response to Appellant's
argument, "[t]he indefiniteness rejection pertains to what happens when the
closure system is opened, not what happens when the closure system is
basis for the rejection, publishes as an application publication or issues as a
patent." MPEP 1504.06). Application No. 13/964, 178 has published as
U.S. Patent Pub. No. 2014/0041450.
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Application 14/194,851
closed." Ans. 6 (emphasis added). We also agree that the claim appears to
introduce a temporal consideration by indicating that the skin separates from
the equipment "when the closure system is opened." Appellant's argument
that this phrase refers to what is possible when the closure system is closed
only heightens the ambiguity. Accordingly, we sustain the indefiniteness
rejection of claims 1 and 13.
The Examiner rejected claim 11 because it contains the phrase "velcro
strips" as a type of "closure system," which includes the trademark
VELCRO. Final Act. 2-3, 6-7; Br. 17 (Claims App.). The Examiner relied
on a portion of the MPEP indicating that if a trademark "is used in a claim as
a limitation to identify or describe a particular material or product, the claim
does not comply with the requirements of'§ 112, second paragraph. Id. at 7
(quoting MPEP 2173.0S(u)).
Appellant points out that an amendment-after-final adopted the
Examiner's suggestion to replace "VELCRO strip" with "hook-and-loop
strip," but the amendment was not entered. Br. 8 (citing Adv. Act.).
Appellant then argues that "claim 11 is definite since the Examiner was able
to understand the intended meaning as evidenced by his suggestion." Id.
Appellant's argument that the Examiner must have understood the
meaning of "velcro strips" in claim 11 because of a suggested amendment to
resolve ambiguity lacks support. The fact that the proposed amendment
would replace the "velcro strips" phrase with more clear language does not
suggest that the "velcro strips" phrase without any amendment is sufficiently
definite. Accordingly, we sustain the rejection of claim 11 as indefinite.
Based on the foregoing, we sustain the indefiniteness rejection of
claims 1, 11, and 13 .
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Application 14/194,851
Obviousness
Claims 1---8 and 11-20
As noted above, the Examiner withdrew a number of rejections in the
Answer. Ans. 3-5. The remaining rejections subject to appeal rely on a
combination of Harrick and Eyster, and additional prior art for certain
claims. See Final Act. 30-46. Regarding the limitation requiring "a
reversible closure system configured to join edges of the flexible sheet," the
Examiner found that Figure 12 of Eyster discloses "fastening elements 88
and 90 specifically configured to join edges of a flexible sheet to form a
reversible closure." Br. 17; Ans. 9.
In an argument that seemingly applies to all pending claims,
Appellant first argues that "Eyster' s coverings are made of interwoven fibers
that form a lattice-like configuration." Br. 13. To the extent this represents
an argument that Eyster fails to disclose a flexible sheet, we disagree. As
the Examiner found, this argument does not establish that Eyster' s
"interwoven fibers" do not form a flexible sheet. Ans. 9 ("[C]ertainly a
flexible sheet can be made of interwoven fibers."). Id.
Appellant also argues that "[t]he cited portions of Eyster (which refer
to a cable, a clip and strips fixing the coverings to the equipment but NOT
joining edges of a flexible sheet) and its entire disclosure do not teach or
suggest a reversible closure system joining edges of a flexible sheet as
claimed." Br. 13. The Examiner responds with the finding noted above,
that, in Eyster, "FIG. 12 clearly shows fastening elements 88 and 90
specifically configured to join edges of a flexible sheet to form a reversible
closure." Ans. 9. Appellant does not respond to this finding based on
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Application 14/194,851
Figure 12, and our own review of the Figure supports the Examiner's
finding.
Based on the foregoing, we sustain the rejection of claims 1-8 and
11-20. We address an additional argument Appellant raises with respect to
claim 9 below. See Br. 14.
Claim 9
Claim 9 depends from claim 4 and further recites "wherein the
antifouling property is achieved by making the surface to have a bright color
or reflective surfaces to reflect most of light." The Examiner found that Bell
discloses "antifouling mirror surfaces with high reflectivity in water ( col. 5,
lines 31-33; col. 10, lines 1-7), and therefore suggests that the antifouling
property is achieved by making the surface to have a bright color or
reflective surfaces to reflect most of [the] light." Final Act. 40.
Appellant argues that Bell requires placing its device "slowly into
water and maintaining an air layer" to produce its mirror-like appearance,
and those conditions are not likely met in the case of seismic equipment for
marine surveys. Br. 14. Appellant's argument does not apprise us of error.
The Examiner correctly construes claim 9 to merely require achieving
antifouling properties by "making the surface to have ... reflective surfaces,"
and Bell does not suggest that the method of placing its device in the water
would remove its antifouling properties. Ans. 10; Br. 18 (Claims App.)
( emphasis added). The fact that Bell discloses making a surface with
antifouling properties that is reflective under certain conditions is sufficient
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Application 14/194,851
to meet the claim requirements, even if under other conditions the surface
may not appear reflective. 12
Finally, Appellant argues that Bell's "metallic layer is not prone to be
removable as the claimed second skin, thereby Bell teaching away from the
other claimed features." Br. 14. The Examiner points out that thin,
removable metallic skins, such as aluminum or food wrapped in metal foil,
are well known. Ans. 11. We agree. In addition, a reference does not teach
away if it merely expresses a general preference for an alternate invention
but does not "criticize, discredit, or otherwise discourage" investigation into
the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Appellant does not support its teaching away argument with any
disclosure from Bell that its metal skin would be unfit for use in the
combination with Harrick and Eyster. See Br. 14. Moreover, claim 9 refers
to "a surface" of the flexible sheet having a reflective surface, with the sheet
forming part of the removable second skin of claim 1----claim 9 does not
require the surface itself to be removable, so long as the underlying sheet is
removable. Accordingly, the alleged inability to remove Bell's metal
surface would not necessarily undermine the Examiner's use of Bell in the
rejection. Based on the foregoing, we sustain the rejection of claim 9.
12 As an apparent variation on this argument, Appellant asserts that "it is not
reasonable to assume that fouling aiming to attach to equipment surface[s]
would view equipment surface[ s] only passed the critical angle where light
is reflected." Br. 14. To the extent we understand Appellant's argument, we
agree with the Examiner's assessment that "Bell is merely pointing out that
the made surface is highly reflective when certain conditions are met, and is
not suggesting that 'fouling' looks at or views the surface." Ans. 10-11.
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Application 14/194,851
DECISION
We affirm the decision of the Examiner to (1) reject claims 4--8, 11,
15, and 16 under provisional nonstatutory double patenting as being
unpatentable over claims of U.S. Application No. 13/964,178; (2) reject
claims 1, 11, and 13 under 35 U.S.C. § 112, second paragraph, as indefinite;
and (3) reject claims 1-9 and 11-20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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