Sangsoo Ryu et al.

Patent Trials and Appeals Board

Dec 13, 2019

14762383 - (D) (P.T.A.B. Dec. 13, 2019)

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.
14/762,383 07/21/2015 Sangsoo Ryu 2013EM106 6891
34477 7590 12/13/2019
ExxonMobil Upstream Research Company
22777 Springwoods Village Parkway
(EMHC-N1.4A.607)
Spring, TX 77389
EXAMINER
ARMSTRONG, KYLE
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
12/13/2019 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):
urc-mail-formalities@exxonmobil.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANGSOO RYU and JEAN M. AUDIBERT
____________

Appeal 2018-008525
Application 14/762,383
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–5, 7–13, 15, and 16. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
ExxonMobil Upstream Research Company, which is a subsidiary of Exxon
Mobil Corporation. (Appeal Br. 3.)
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Application 14/762,383
2
CLAIMED SUBJECT MATTER
Appellant’s “invention generally relates to the field of pile foundation
systems.” (Spec. ¶ 2.)
Claims 1 and 9 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. An apparatus for a foundation comprising:
a first elongated member that is a suction pile with a first
length, a first cross-section, a sealed top, and an open bottom;
and
a second elongated member with a second length and a
second cross-section,
wherein the second elongated member is connected near
the end of the first elongated member that will be located in the
deepest portion of the soil, and wherein the second cross-section
is greater than the first cross-section and the second length is less
than the first length, and wherein the second elongated member
is open on both ends outside the first cross-section, and wherein
the ratio of the length of the first elongated member to the length
of the second elongated member is between 5 to 20 such that the
upper end of the second elongated member is positioned distal a
surface of the soil such that the second elongated member
enhances axial holding capacity of the first elongated member
through the shear strength of the soil in said deepest portion of
the soil.

REJECTION
Claims 1–5, 7–13, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Schellstede (US 2007/0243063 A1, pub.
Oct. 18, 2007) and Hull (US 3,691,776, iss. Sept. 19, 1972).

ANALYSIS
Obviousness is a legal conclusion involving a determination of four
underlying facts.
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Application 14/762,383
3
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that “Schellstede discloses an apparatus for a foundation comprising: a
first elongated member that is a suction pile [Figure 4L] with a first length, a
first cross-section, a sealed top, and an open bottom.” (Final Action 4.) The
Examiner also finds:
Hull teaches an expansive base pile construction having a
first elongated member [34] and a second elongated [44] member
with a second length and a second cross-section, wherein the
second elongated member is connected near the end of the first
elongated member that will be located in the deepest portion of
the soil, and wherein the second cross-section is greater than the
first cross-section and the second length is less than the first
length, and wherein the second elongated member is open on
both ends outside the first cross-section [Figures 1, 2 & 10].

(Id.)
In view of the above, the Examiner determines:
it would have been obvious to one of ordinary skill in the art to
modify the suction pile of Schellstede by adding the second
elongated member as described by Hull to both increase the shear
strength of the soil around the pile and increase the friction
between the soil and the surfaces of the pile [Column 6, Lines
47-53], thereby enabling the required design bearing capacity to
Appeal 2018-008525
Application 14/762,383
4
be achieved with a shorter pile effectively saving on material and
installation costs.

(Id. at 4–5.)
Appellant argues that “suction piles (which are part of independent
Claims 1 and 9) do not form ‘soil plugs’” and that Hull’s device relies on
soil plug formation. (Reply Br. 3 (emphasis omitted).) Appellant further
argues that “with an understanding how the ‘expansive base’ device operates
in the Hull reference (as to one of skill in the art), it would not be obvious to
modify the suction pile in the Schellstede reference with the device of the
Hull reference.” (Id.)
Figure 2 of Hull is reproduced below.

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Application 14/762,383
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Figure 2 shows a “perspective view, partially cut away, of the base portion
of the pile according to the [invention of Hull].” (Hull, col. 2, ll. 40–42.)
Hull teaches:
Firstly, because the pile stem displaces soil and forces it into the
spaces surrounded by the rim 38 and skirt 44, the soil becomes
more densely packed. . . . Secondly, the rim and skirt each have
substantial tensile strength and thus restrain the outward radial
movement of the soil displaced by the pile stem. This causes an
increase in the lateral restraining force []. As a result of these
two factors, the shear strength of the soil between the stem, rim
and spokes is very substantially increased, and a very positive
plugging action can be achieved.
As indicated above, the effective plugging which will
permit the soil between the pile stem, spokes and rim to act as an
integral part of the pile base and contribute to its support,
depends upon both an increase in the shear strength of the soil
and an increase in the friction between the soil and the surfaces
of the pile stem, spokes and rim.
(Id., col. 6, ll. 32–50.) In short, the solid pile stem of Hull, when driven
through soil, displaces soil and forces the displaced soil into the spaces
surrounded by the rim and skirt to effectively form a plug at the base of the
pile. “As a result, the base portion serves to distribute the loading force of
the pile over an area corresponding to the cross section enclosed by the rim.”
(Id., col. 4, ll. 38–41.)
Unlike the pile of Hull, claims 1 and 9 of the present invention recite
“a suction pile.” Appellant’s Specification discloses that
[s]uction piles have the appearance of an inverted bucket with a
sealed top and are installed by first establishing initial
penetration into the seabed due to the weight of the pile. Then,
subsequent penetration is achieved by the “suction” created by
pumping water out from inside the pile. A submersible pump
attached to the top of the pile applies suction pressure. When the
required depth is reached, the pump can be disconnected and
retrieved.
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Application 14/762,383
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(Spec. ¶ 5.)
Applying a broadest reasonable interpretation, we determine that the
term “suction pile” includes a pile stem that is not solid and has an open
bottom. This is in accord with the language of claim 1 (“a first elongated
member that is a suction pile with a first length, a first cross-section, a sealed
top, and an open bottom”).
As noted above, and also under this interpretation, the Examiner finds
that Schellstede discloses a suction pile. In contrast, Hull shows a solid pile
stem (see Hull, Fig. 2), and, as also noted above, teaches that “because the
[solid] pile stem displaces soil and forces it into the spaces surrounded by
the rim 38 and skirt 44, the soil becomes more densely packed,” resulting in
the formation of a plug. (Hull, col. 6, ll. 32–34.)
“‘[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” KSR Int’l
Co., 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, the Examiner does not sufficiently explain why Schellstede’s suction
pile, if modified to add “the second elongated member as described by Hull”
(see Final Action 4), i.e., the ring and skirt of Hull, would form the plug that
Hull uses “to act as an integral part of the pile base and contribute to its
support.” (Hull, col. 6, ll. 46–47.) Or, in the alternative, why it would have
been obvious to so modify the suction pile of Schellstede if no plug would
be formed.
Therefore, we will reverse the rejection of independent claims 1
and 9, and dependent claims 2–5, 7, 8, 10–13, 15, and 16 under § 103(a).

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Application 14/762,383
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CONCLUSION
The Examiner’s rejection of claims 1–5, 7–13, 15, and 16 under
35 U.S.C. § 103(a) is reversed.

Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–5, 7–13, 15,
16
103(a) Schellstede, Hull 1–5, 7–13,
15, 16

REVERSED