STATOIL PETROLEUM AS

Patent Trials and Appeals Board

Sep 1, 2021

2020005703 (P.T.A.B. Sep. 1, 2021)

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.
15/537,105 06/16/2017 Knut SVEBERG 2017-0942A 4208
513 7590 09/01/2021
WENDEROTH, LIND & PONACK, L.L.P.
1025 Connecticut Avenue, NW
Suite 500
Washington, DC 20036
EXAMINER
WOOD, DOUGLAS S
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KNUT SVEBERG and
BJØRGULF HAUKELIDSÆTER EIDESEN
Appeal 2020-005703
Application 15/537,105
Technology Center 3600
Before DANIEL S. SONG, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–4 and 6–15. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant identifies the real party in interest as
EQUINOR ENERGY AS. Appeal Br. 1.
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Application 15/537,105

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CLAIMED SUBJECT MATTER
The claims are directed to a subsea manifold system and a method of
connecting a subsea wellhead. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A modular, subsea hydrocarbon production hub
comprising:
a primary manifold and at least one co-located extension
structure, the primary manifold having first connections for
connection to at least a riser and an umbilical from a top-side
facility, and second connections for connection to at least one
extension structure,
wherein the at least one extension structure is within one
hundred meters of the primary manifold,
wherein the at least one extension structure comprises a
secondary manifold having first connections connected to the
second connections of the primary manifold, second connections
for connection to at least one further extension structure, and
third connections for connection to at least one wellhead or
template,
the secondary manifold providing for a flow of produced
hydrocarbon from the at least one wellhead or template to the
top-side facility via the primary manifold and the riser, and
facilitating electrical and/or hydraulic control from the top-side
facility via the primary manifold and the umbilical.
Appeal Br. 13 (Claims App.).
OPINION
The Examiner rejects claim 1–4 and 6–15 under 35 U.S.C. § 103 as
being unpatentable over Crossley (US 7,958,938 B2, iss. June 14, 2011).
Final Act. 2. As to independent claim 1, the Examiner finds that Crossley
discloses a subsea hydrocarbon production hub substantially as claimed,
including “a primary manifold (115) and at least one co-located extension
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structure (125, 135).” Final Act. 2–3. The Examiner concedes that Crossley
fails to disclose that “the at least one extension structure is within one
hundred meters of the primary manifold.” Final Act. 2–3. The Examiner,
however, concludes that:
[I]t would have been obvious to one having ordinary skill in the
art at the time the invention was made, to contrive any number
of desirable ranges for the distance between structures
limitation disclosed by Applicant, since it has been held that
where the general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges involves
only routine skill in the art.
Final Act. 3.
The Appellant argues that the rejection is improper because Crossley
does not disclose a “co-located extension structure” or such an extension
structure that is “within one hundred meters of the primary manifold” as
required by claim 1. Appeal Br. 7. In that regard, the Appellant points out
that “[t]he term ‘co-located’ is defined in the specification as ‘located in a
group or cluster proximate one another in the context of an offshore
hydrocarbon production facility.’” Appeal Br. 8 (quoting Spec. 3, second
full paragraph). The Appellant argues that “the manifolds 115, 125, 135 in
Crossley are clearly not ‘co-located’ with one another, but rather are
positioned at different well-sites separated by distances of 0.5 to 20 miles.”
Appeal Br. 8; see also Appeal Br. 7; Crossley, col. 8, ll. 13–14.
Accordingly, the Appellant asserts that “one of ordinary skill in the art
would understand that the Crossley manifolds cannot reasonably be
considered to be ‘co-located extension structures’”. Appeal Br. 9. The
Appellant also argues that “[s]ince the manifolds 115, 125, 135 of Crossley
are spaced at such large distances from each other, the manifolds cannot
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‘reasonably’ be considered to be modules of a single hub as required in
independent claim 1.” Appeal Br. 9.
The Appellant’s arguments are unpersuasive and we agree with the
Examiner that claim 1 is unpatentable. The Examiner is correct that “the
difference between the [Appellant’s] invention and that of Crossley is
merely that of the distances involved.” Ans. 9. All of the recited structural
limitations of claim 1 are disclosed in Crossley except for the separation
distance between the primary manifold and the extension structure. In that
regard, the limitation reciting “co-location” merely refers to the distance by
which the primary manifold and the extension structure are separated, which
claim 1 explicitly states is “within one hundred meters.” Even when “co-
located” is interpreted to mean “located in a group or cluster proximate one
another in the context of an offshore hydrocarbon production facility,” the
Examiner is still correct that “lengthened connecting components would be
the only structural differences” between the offshore system disclosed in
Crossley and the invention recited in claim 1. Ans. 8–9.
We agree with the Examiner that modification to the distance between
the manifold 115 and manifold 125 of Crossley “would have involved a
mere change in the size of said [connecting] components, [and] such a
change is generally recognized as being within the level or ordinary skill in
the art.” Ans. 9; In re Rose, 220 F.2d 459, 463 (CCPA 1955); see also
Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346, (Fed. Cir. 1984); In re
Kirke, 40 F.2d 765, 767 (CCPA 1930). We further agree with the Examiner
that “even if . . . ‘co-located’ was denoted by a specific distance (less than
100m) determined by the [Appellant’s] lexicography, a ‘non-co-located’
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analogous structure would still be an obvious variant to one having ordinary
skill in the art.” Ans. 9. As explained by the Supreme Court:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
The Appellant responds that the Examiner appears to interpret “co-
located” to mean “connected” so as to not impose “any limitation on the
claim with respect to distance” as “co-located” is defined in the
Specification. Reply Br. 2. However, the Appellant’s argument does not
address the issue of obviousness, and as already discussed, even when the
Appellant’s definition is applied to the claim language and further limited to
one hundred meters, the conclusion of obviousness remains valid.
The Appellant also argues that “Crossley relates to a system in which
remote, satellite fields are connected together in a ‘daisy-chained’
arrangement of the type discussed in the last paragraph of page 1 of the
present specification” such that it is “directed to a different solution to the
completely different problem of connecting a plurality of offshore fields.”
Appeal Br. 9. In that regard, the Appellant asserts that the Specification
“does intend ‘co-located’ to mean that the manifolds are not positioned at
different satellite well sites (as they are in the Crossley patent).” Reply
Br. 3. Accordingly, the Appellant argues that “the structure at an individual
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well site in the Crossley patent should have been compared to Appellant’s
claimed subsea hydrocarbon production hub.” Appeal Br. 10.
Such arguments are unpersuasive. As discussed above, the only
difference between the invention claimed and the offshore system of
Crossley is the distance between the primary manifold and the extension
structure. As stated by our reviewing court in In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.”
Regardless of the Appellant’s intent, these arguments do not account for the
broad recitations of claim 1, or the skill and creativity of one of ordinary
skill in the art in implementing a predictable variation and applying a known
technique. KSR, 550 U.S. at 417. Moreover, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
421.
Finally, the Appellant argues that in contrast to the Examiner’s
assertion, “the recited distance between the extension structure and the
primary manifold is not an ‘optimized’ distance.” Appeal Br. 10. This
argument is also unpersuasive as the Examiner’s reasoning is based on the
person of ordinary skill determining “desirable ranges” or “workable ranges”
for the distance. Final Act. 3. The placement of numerous wells 112 and
their corresponding trees 114 along the mudline 104 in the offshore system
of Crossley (see Crossley Fig. 2) would inform the range of distances
between the primary manifold and the extension structure, which are
connected to each other. Based thereon, the workable ranges for the
distances between the primary manifold and the extension structure would
be determined by one of ordinary skill in the art. The Appellant has not
provided any persuasive evidence or arguments that such determination
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would be beyond the skill of those of ordinary skill in the art or produce any
unexpected results. See In re Applied Materials, Inc., 692 F.3d 1289, 1297
(Fed. Cir. 2012) (“The Board correctly found that there was no indication
that obtaining the claimed dimensions was beyond the capabilities of one of
ordinary skill in the art or produced any unexpectedly beneficial
properties.”).
Therefore, in view of the above, we agree with the Examiner that
claim 1 would have been obvious to one of ordinary skill in view of
Crossley, and affirm the rejection thereof. The Appellant does not submit
separate arguments directed to claims 2–4 and 6–14 that ultimately depend
from claim 1. Accordingly, these claims fall with claim 1. As to
independent claim 15, the Appellant relies on the same unpersuasive
arguments set forth relative to claim 1 in support of patentability. Appeal
Br. 11.2 Accordingly, the rejection of claim 15 is also affirmed.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–15 103 Crossley 1–4, 6–15

2 We note that the heading in the Appeal Brief identifies the rejection of
claim 15 as being anticipated under § 102(a)(1). Appeal Br. 10. Indeed, the
Appellant argues that “[t]hus, the Crossley patent does not fairly disclose
each and every limitation of claim 15.” Appeal Br. 11. However, claim 15
was rejected as being obvious under § 103. Final Act. 2, 6.
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TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED