Ex Parte Toftner et al

Patent Trial and Appeal Board

May 26, 2016

12886430 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/886,430 09/20/2010 Peer Toftner
11171 7590 05/31/2016
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.
0336-374/99968 1558
EXAMINER
SHAHINIAN, LEVON J
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PEER TOFTNER and DENIS MURPHY
Appeal2015-000627
Application 12/886,430
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
November 18, 2013 decision finally rejecting claims 1-3 and 5-13 ("Final
Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the Real Party in Interest as Fugro Norway AS (Br. 2).
Appeal2015-000627
Application 12/886,430
CLAHvIED SUBJECT ivIATTER
Appellants' invention is directed to a tubular cleaner for cleaning a
streamer cable which is towed in water, as well as an apparatus for connecting a
"bird"2 to a streamer cable (Abstract, Spec. i-fi-19, 24). Details of the claimed
invention are set forth in independent claims 1 and 2, which are reproduced
below from the Claims Appendix:
1. A tubular cleaner for cleaning a streamer cable towed in
water, the tubular cleaner comprising:
a tubular body configured to encircle the streamer cable;
a cleaning tool attached to an interior of the tubular body for
cleaning the streamer cable, and
a slit made in a side wall of the tubular body, the slit running
uninterrupted in a longitudinal direction of the tubular body, from
a front end to a rear end of the tubular body,
wherein the slit is configured to receive a rung part of a
connecting apparatus that is connected to the streamer cable when
the tubular body moves along the streamer cable, past the rung
part.
2. A connecting apparatus for connecting a bird to a
streamer cable, the connecting apparatus comprising:
an inner part configured to attach the connecting apparatus
to the streamer cable;
a rung part having an inner end rigidly attached to an outer
surface of the inner part and extending therefrom in a substantially
radial direction with respect to a center axis of the inner part; and
an outer part having first and second ends thereof for
engaging respective parts of the bird, the outer part having an inner
surface at which an outer end of the rung part is rigidly attached.
2 A "bird" is defined in the Specification as a steering device which controls
the position of a streamer cable in the water (Spec. i-f4).
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Application 12/886,430
REJECTIONS
I. Claims 1and5---6 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Bokat. 3
II. Claims 2, 3, 10, 11, and 13 are rejected under 35 U.S.C. § 102(b)
as being anticipated by 1967 VW Owner's Manual4 as evidenced by Parts. 5
III. Claims 2, 3, 11, and 136 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Tiebout. 7
IV. Claims 7-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bokat in view of Golden. 8
V. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over 1967 VW Owner's Manual as evidenced by Parts.
VI. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Tiebout.
DISCUSSION
Rejections of claims 1 and 5-9
"A prior art reference anticipates a patent claim under 35 U.S.C.
§ 102(b) if it discloses every claim limitation." In re Montgomery, 677 F.3d
1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet
3 Bokat, U.S. Patent No. 5,077,861, issued January 7, 1992.
4 1967 VW Beetle Owner's Manual (1967), included in prosecution file.
5 Parts - Beetle 1966-71 Hom Ring.pdf and "VWHeritage - Beetle 1966-71
Hom Ring.pdf, included in prosecution file.
6 Note that the anticipation of claim 10 over Tiebout set forth in the Final
Action was withdrawn by the Examiner (Ans. 11 ).
7 Tiebout, U.S. Patent No. 358,306, issued February 22, 1887.
8 Golden, U.S. Patent No. 5,351,359, issued October 4, 1994.
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Application 12/886,430
Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). In this instance,
Appellants contend, inter alia, that Bokat does not disclose "a slit in a side
wall of a tubular body" (Br. 6). Appellants' argument is persuasive. The
Examiner has not adequately established that if Bokat's device were opened
sufficiently to form a slit "to receive a rung part of a connecting apparatus"
that the resulting device would have a "tubular body." Similarly, if Bokat's
device is in the closed position (such that it does have a "tubular body"),
then it would not have the claimed slit.
Accordingly, we reverse the anticipation rejection of claims 1, 5, and
6 over Bokat. With regards to the obviousness rejection of claims 7-9, each
of which depends from claim 1, over Bokat in view of Golden, the Examiner
has not made additional findings which address the deficiency in the
anticipation rejection outlined above (see, Final Act. 12-13). Therefore, we
also reverse the obviousness rejection of claims 7-9.
Rejections of claims 2, 3, and 10-13 over 1967 VW Owner's Manual
The Examiner has rejected claims 2, 3, 10, 11, and 13 as anticipated
by 1967 VW Owner's Manual (as evidenced by Parts), an annotated version
of which is reproduced below:
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Appeal2015-000627
Application 12/886,430
The annotated drawing from Parts shows a device which the Examiner found
anticipates claims 2, 3, 11, 10, 11, and 13.
Appellants make two arguments urging reversal of the anticipation
rejection. First, they argue that the cited apparatus "cannot be attached" to a
streamer cable (Br. 11 ). However, Appellants concede that "middle [inner]
part 2 ... has a hole capable of receiving a cable," although they assert that "it
is not clear how this middle [inner] part 2 is to be attached to that cable
because the middle [inner] part 2 is not designed for such a purpose" (Br.
11-12). This argument is not persuasive. It is apparent that the inner part 2
can simply be slipped over the end of a cable, and thus is "configured" to be
attached to a streamer cable.
Second, Appellants argue that the cited apparatus does not have end
parts to be attached to a bird (Br. 12). In particular, Appellants contend that
the cited apparatus does not have any end parts (id.). This argument is not
persuasive. The Examiner finds that ends 11 and 12 correspond to the
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Application 12/886,430
claimed first and second ends (Final Act. 8, Ans. 14). ivforeover, the
Examiner finds that ends 11 and 12 are capable of "engaging respective
parts of a bird by providing solid portions of horn ring 1 for parts of a bird to
attach onto or otherwise engage, such as by abutted contact" (Ans. 14).
Appellants have not persuasively challenged the Examiner's findings.
Accordingly, we find that Appellants have not shown reversible error
in the Examiner's finding that 1967 VW Owner's Manual anticipates claim
2. With respect to the anticipation rejections of claims 3, 10, and 11 and the
obviousness rejection of claim 12 over 1967 VW Owner's Manual, we
determine that Appellants have not shown reversible error in the Examiner's
findings which underlie the rejections, essentially for the reasons set forth in
the Final Action (p. 9) and the Answer (pp. 20-21 ).
With respect to claim 13 - which recites that the connecting apparatus
of claim 2 further comprises "an adapter between the streamer cable and the
inner part," the Examiner finds that this limitation is met because the
"central hole, at reference number 8 of inner part 2" corresponds to the
claimed adapter (Final Act. 9). While it is well established that "the PTO
must give claims their broadest reasonable construction consistent with the
specification (In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007)), that construction must be reasonable. In this instance the
Examiner has not provided any explanation of how the claimed "adapter"
can correspond to empty space in the device pictured in the 1967 VW
Owner's Manual. The Specification explicitly shows an adapter which is
present (see, e.g., Spec. i-f 22, citing adapter 250 in FIG. 3). Thus, we find
Appellants have shown error in the Examiner's finding that the central hole
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Application 12/886,430
of inner part 2 corresponds to the claimed adapter, and reverse the
anticipation rejection of claim 13 over 1967 VW Owner's Manual.
Rejection of claims 2, 3, 11, 12, and 13 over Tiebout
The anticipation rejections (claims 2, 3, 11, and 13) and obviousness
rejection (claim 12) over Tiebout are essentially cumulative over the
rejections over 1967 VW Owner's Manual. Similarly, the arguments made
by Appellants (Br. 13-17) seeking their reversal are essentially cumulative
to the arguments made in connection with the rejections over 1967 VW
Owner's Manual.9 Our resolution of these rejections is the same:
affirmance of the rejections of claims 2, 3, 11, and 12, and reversal of the
rejection of claim 13.
CONCLUSION
We REVERSE the rejections of claims 1, 5-9, and 13.
We AFFIRM the rejections of claims 2, 3, and 10-12.
9 Appellants offer the additional argument that because Tierney discloses an
anchor, it could not be considered to be configured to be attached to a
streamer because it is too heavy (Br. 14). However, Appellants have
admitted that anchors are only "usually made to be heavy" (id.), and offers
no persuasive evidence that either Tiebout's anchor is especially heavy or
that it is heavier that the claimed connecting apparatus would be.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
8