15.10.2014
`
`Preamble
`
`Anmelde-Nr:
`
`§gP"°a“°“
`Demande n °:
`
`07 113 031.4
`
`The following communication presents a decision based on the oral
`
`proceedings on 17.09.2014.
`
`Facts and submissions
`
`European patent No EP1850151 is based upon European patent application
`
`No EP 07113031, filed on 28.09.1999 and claiming priority of GB 9821277
`
`filed on 01.10.1998. Furthermore, the European patent No EP1850151 is a
`
`divisional filing of the European patent application No EP 99943180, filed on
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`28.09.1999, which itself is the regional phase of the international application
`
`PCT/IB99/01590, published as WO/00/20895 and having a priority date of
`01.10.1998.
`
`The mention of the grant of the patent has been published in European
`
`Patent Bulletin 2011/32 of 10.08.2011, as follows: "Control system for
`
`positioning of marine seismic streamers"; Proprietor, WesternGeco
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`Seismic Holdings Limited (IT, NL).
`
`Services Pétroliers Schlumberger (FR).
`
`On 10. 05. 2012, an opposition was filed against the granted patent by the
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`opponent:
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`ION Geophysical Corporation, 2105 City West Blvd. Suite 400,
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`Houston. TX 77042-2839, USA.
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`Requests
`
`With his letter of 10. 05. 2012 the opponent ION Geophysical Corporation
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`requested that:
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`— the contested patent be revoked in its entirety in accordance with Articles 99
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`and 100 (a) EPC on the ground of lack of novelty (Art. 54 EPC) and on
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`ground of lack of inventive step (Art. 56 EPC), on the ground of insufficiency
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`of disclosure (Art. 100(b) EPC and 83 EPC) and on the ground of added
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`subject—matter that extends beyond the content of the application of the
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`earlier application as filed (Art. 100(c) EPC and 123(2) EPC).
`
`- auxiliary, oral proceedings to be held (Art. 116 EPC).
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`EPO Form 2916 01.91TR|
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`WESTERNGECO Exhibit 2071, pg. 1
`PGS v. WESTERNGECO
`IPR2014-01477
`
`

`
`15.10.2014
`
`Anmelde-Nr:
`Application
`No:
`Demande 11 °:
`
`07 113 031.4
`
`2_2_1
`
`The following documents were brought into evidence by the opponent:
`
`E1
`
`E2
`
`US 5 200 930 A (ROuOuETTE ROBERT E [US]) 3 April 1993 (1993-04-03)
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`WO 93/23333 A1 (G ECO AS [NO]; BITTLESTON SIMON HASTINGS [NO]) 2
`
`JuIy1993(1993-07-02)
`
`us 5 790 472 A (wORI<MAN RICKY L [us] ET AL) 4 August 1993
`
`(1993-03-04)
`
`EP 0 313 025 A1 (GECO AS [NO]) 31 August 1994 (1994-03-31)
`
`WO 97/11395 A2 (LAITRAM CORP [us]; OLIvIER ANDRE w [us]; RAu
`
`BRIEN G [us]; ROuOuETTE R) 27 March 1997 (1997-03-27)
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`uS 4 404 334 A (ZACHARIADIS ROBERT G [US]) 13 September 1933
`
`(1933-09-13)
`
`EP 0 013 053 A1 (SHELL INT RESEARCH [NL]) 29 October 1930
`
`(1930-10-29)
`
`uS 4 390 533 A (DOLENGOWSKI GEORGE A [US]) 2 January 1990
`
`(1990-01-02)
`
`US 4 373 133 A (CON BOY MICHAEL R [US]) 30 June 1937 (1937-03-30)
`
`us 4 729 333 A (KIRBY ROBERT A [us] ET AL) 3 March 1933 (1933-03-03)
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`GB 2122 532 A (SEISMOGRAPH SERVICE) 13 January 1934 (1934-01-13)
`
`us 5 532 975 A (ELHOLM TOR [NO]) 2 JuIy 1993 (1993-07-02)
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`wo 97/30331 A1 (THOMSON CSF [ER]; BERTHEAS JEAN [ER]; MORESCO
`
`GILLES [ER]; SUPPA VITO) 21 August 1997 (1997-03-21)
`
`uS 5133 532 A (EuRu HARALD [NO]) 11 August 1992 (1992-03-11)
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`COURT I N: "Applications of acoustics to streamer/source positioning“,
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`SEG EXPANDED ABSTRACTS, XX, XX,
`
`1 January 1989 (1989-01-01), pages
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`610-612, XP002480425,
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`EPO Form 2916 01.91TR|
`
`WESTERNGECO Exhibit 2071, pg. 2
`PGS v. WESTERNGECO
`IPR2014-01477
`
`

`
`15.10.2014
`
`Anmelde-Nr:
`
`§gP"°a“°“
`Demande n °:
`
`07 113 031.4
`
`The opponent provided following grounds of opposition:
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`— Added subject—matter (Art. 76(1) EPC, Art. 100(c) EPC, 123(2) and (3) EPC)
`
`in independent claims 1 and 15, dependent claims 2-14 and 16-28;
`
`- Insufficiency of disclosure (Art. 100(b) EPC and 83 EPC);
`
`- Lack of novelty (Art. 100(a) EPC and Art. 54 EPC) of independent claims 1
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`and 15 vis-a-vis E1, E2, E3 and E4;
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`- Lack of inventive step (Art. 100(a) EPC and Art. 56 EPC) of independent
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`claims 1 and 15 vis-a-vis a combination of E2 and E4, a combination of E2
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`and E3, a combination of E4 and E2, a combination of E4 and E3;
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`- Lack of novelty of dependent claims 5-10 and 15-19 vis-a-vis E1 and E2;
`
`- Lack of inventive step of all dependent claims vis-a-vis any combination of
`E1 to E9.
`
`With the letter of response of 28.01.2013 the proprietors requested
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`- maintenance of the patent as granted; and
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`- auxiliary, oral proceedings to be held (Art. 116 EPC)
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`- auxiliary, in case that submissions by the Opponent's Representatives are
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`made in an another language than English, then the patentee requests
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`simultaneous translation into English of the Opponents Representatives
`submissions.
`
`On 09. 04. 2014, a summons to oral proceedings was sent.
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`The opponent filed a submission on 15. O8. 2014 with further remarks
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`concerning added subject—matter in independent claims 1 and 15 and
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`dependent claims 4, 5, 18 and 19.
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`The proprietor filed on 18. 08. 2014 1 main request and 4 auxiliary requests.
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`During the oral proceedings the proprietor filed two first auxiliary requests,
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`replacing the previous first auxiliary requests on file.
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`Grounds for the Decision
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`The opposition is deemed to be admissible
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`With regard to sufficiency of disclosure (Art. 100(b) EPC, Art.83 EPC):
`
`a) the feature location information is sufficiently disclosed. Page 8 of the
`
`parent application discloses two different embodiments of acquiring location
`information:
`
`1) from a predictor software (lines 1 and 2)
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`EPO Form 2916 01.91TR|
`
`WESTERNGECO Exhibit 2071, pg. 3
`PGS v. WESTERNGECO
`IPR2014-01477
`
`

`
`15.10.2014
`
`Anmelde-Nr:
`
`§gP"°a“°“
`Demande n °:
`
`07 113 031.4
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`2) from the vessels navigation system (lines 6-10).
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`Furthermore, on page 11, lines 12-14 it is directly disclosed that the global
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`control system can transmit location information to the local control system.
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`b) the task of the glgbal ggntrgl §y§1gm is sufficiently disclosed throughout
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`the whole description of the parent application in order to perform the claimed
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`invenfion;
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`c) the feature estimating velocity is sufficiently disclosed in order to perform
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`the invention. The calculations on page 17 of the parent application
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`incorporate the towing velocity, i.e. the velocity of the streamers. The
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`positioning devices are coupled to the streamers. Therefore, the towing
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`velocity is also the velocity of the positioning device. This is directly and
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`unambiguously derivable from the description on page 17;
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`cl) the feature distributed processing control architecture and behaviour-
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`predictive model-based control logic is sufficiently disclosed. Page 7 of the
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`parent application discloses how predictor software functions.
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`Dependent claims 2, 3, 13 and 14 are sufficiently disclosed on page 17 of the
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`parent application. It seems that the calculations on page 17 are used to
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`obtain an estimate of the velocity and do not an exact calculations of the
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`velocity.
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`Therefore the application meets the requirements of Article 100(b) EPC and
`Article 83 EPC.
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`Main request (filed on 18. 08. 2014)
`
`With regard to the added subject-matter (Art. 76(1) EPC, Art. 100(c) EPC,
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`123(2) and (3) EPC) in claims 1 and 15:
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`Claim 1:
`
`1a
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`A method of controlling streamer positioning devices:
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`the whole description of the parent application is about controlling streamer
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`positioning devices. Therefore, this feature does not contravene article 76(1)
`
`EPC;
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`1a1
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`using a control system distributed between a global control system
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`located on or near a seismic survey vessel and a local control system located
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`on each streamer positioning device, comprising:
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`the opponent pointed out that the feature of behaviour prediction had to be
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`incorporated into the claim. By referring to page 6 to 8, 11 and 18 the
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`opponent made the remark that this feature is inherently linked to the
`invention.
`
`EPO Form 2916 01.91TR|
`
`WESTERNGECO Exhibit 2071, pg. 4
`PGS v. WESTERNGECO
`IPR2014-01477
`
`

`
`15.10.2014
`
`Anmelde-Nr:
`
`§gP"°a“°“
`Demande n °:
`
`07 113 031.4
`
`However, page 11, second paragraph, line 18 of the parent application
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`discloses the possibility of transmission of information without the need of a
`
`behaviour prediction. Therefore, the feature does not contravene Article 76(1)
`EPC.
`
`1b
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`(a) towing an array of streamers:
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`the opponent objected that only marine seismic streamers are are referred to
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`in the parent application. However, the claim refers to a seismic survey
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`vessel. A vessel is used only in the context of marine seismic. It is clear that
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`the streamers must be towed by the seismic survey vessel. Therefore, the
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`feature does not contravene Article 76(1) EPC.
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`1 c
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`1 d
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`each having a plurality of streamer positioning devices there along
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`each of the streamer positioning devices having a wing used to control
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`the lateral position of the streamer positioning device
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`1 e
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`(b) transmitting from the global control system:
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`Features 1c, 1d and 1e do not contravene Article 76(1) EPC.
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`1f
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`1 g
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`location information to at least one local control system
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`on at least one of the streamer positioning devices and:
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`the opponent objected to the features 1f, 1g that there is no basis in the
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`parent application for a streamer having more than one local control system.
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`However, feature 1.a.1 already discloses one local control system per
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`streamer and features 1f and 1g do not contravene Article 76(1) EPC.
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`1 h
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`(c) adjusting the angle of the wing with a wing motor using the local
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`control system:
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`this feature is disclosed in the summary of the invention of the parent
`
`application.
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`The omission of the feature: force calculation using a localized conversion
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`program:
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`the proprietor argued that this is not an essential feature and represents an
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`alternative of a general system as suggested by the wording “preferably".
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`However, the opposition division shared the opponent's view that with regard
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`to the shared responsibilities between the global and local control system that
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`a force calculation using a localized conversion program is essential (page
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`11, lines 5-14, page 17, lines 1-6 of the parent application) and the omission
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`of that feature represents an unallowed amendment and contravenes Article
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`76(1) EPC.
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`EPO Form 2916 01.91TR|
`
`WESTERNGECO Exhibit 2071, pg. 5
`PGS v. WESTERNGECO
`IPR2014-01477
`
`

`
`15.10.2014
`
`Claim 15:
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`Anmelde-Nr:
`
`§gP"°a“°“
`Demande n °:
`
`07 113 031.4
`
`Features 15a to 15c and 15e to 15i do not extend beyond the disclosure of
`
`the parent application (Article 76(1) EPC) and are therefore allowable. The
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`reasoning being the same as given under point 3.4.1 1a to 1h.
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`The feature 15d "on or in line" was objected by the opponent as having no
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`support in the parent application for a streamer positioning device “in line"
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`with the streamer. The patentee interpreted "in line" as not separated from the
`streamer.
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`The opposition division considers that the feature "in line", which also allows
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`interpretations "before" and "after" the streamer; extends beyond the
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`disclosure of the parent application (Article 76(1) EPC) and is therefore not
`allowable.
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`The omission of the feature: "force calculation using a localized conversion
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`program" extends beyond the disclosure of the parent application (Article 76
`
`(1) EPC) and is therefore not allowable. The reasoning being the same as
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`given under point 3.4.1
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`Claims 4, 5, 18 and 19 were objected by the opponent as unallowable
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`generalizations from the passage on page 11, lines 15-21 of the parent
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`application.
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`The opposition division considers that the subject—matter of claims 4 and 18 is
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`disclosed on page 11, line 16. Therefore, the subject—matter of claims 4 and
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`18 does not extend beyond the disclosure of the parent application (Article 76
`
`(1) EPC) and are therefore allowable. Claims 5 and 19 seem to have
`
`mistakenly swapped the wordings "deviation" and displacement" (see page
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`11, lines 18-21). They therefore extend beyond the disclosure of the parent
`
`application (Article 76(1) EPC) and are therefore not allowable.
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`The opposition division concludes that amendments add subject—matter in the
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`sense of Article 76(1) EPC and 123(2) EPC) and the requirements of Article
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`101 (3)(a) EPC are not met.
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`Auxiliary request 1 (filed during oral proceedings at 14:54h):
`
`With regard to the added subject—matter (Art. 76(1) EPC, Art. 100(c) EPC,
`
`123(2) and (3) EPC) in claims 1 and 14:
`
`- Claims 1 and 14: basis for the introduced features: "wherein adjusting
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`comprises calculating with a localized conversion program of the at least one
`
`local control system, a desired force on the at least one streamer positioning
`
`device using the location information, the desired force selected from a
`
`EPO Form 2916 01.91TR|
`
`WESTERNGECO Exhibit 2071, pg. 6
`PGS v. WESTERNGECO
`IPR2014-01477
`
`

`
`15.10.2014
`
`Anmelde-Nr:
`
`§gP"°a“°“
`Demande n °:
`
`07 113 031.4
`
`desired horizontal force, a desired vertical force, and both" can be found in
`
`original claims 2 and 3 of the opposed patent and on page 11 of the parent.
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`- Claim 14: the same reasoning applies to the corresponding independent
`
`claim 14, which therefore also meets the requirements of Article 76(1) EPO
`
`and Article 123(2) EPC. Therefore, the requirements of Article 76(1) EPO and
`
`Article 123(2) EPC are met.
`
`- claims 3, 4, 16 and 17: the subject-matter of claims 3, 4, 16 and 17 is
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`disclosed on page 11, lines 15-21 of the parent application. Therefore, the
`
`requirements of Article 76(1) EPC, Article 123(2) EPO and Article 101 (3)(a)
`EPC are met.
`
`The application meets the requirements of Article 76(1) EPC and Article 123
`
`(2) EPC.
`
`Unsearched subject-matter
`
`The opponent objected that new claim 1 included unsearched subject-matter
`
`contrary to Article 101(3) EPC combined with Rule 137(5) EPC. However,
`
`Rule 137(5) EPC does not apply to patent specification, but to patent
`
`application. Moreover, since the distributed control system was already
`
`mentioned in the claims in the divisional application, this subject-matter can
`
`be assumed as searched. Therefore, claim 1 complies with Article 101(3) PC.
`
`With regard to inventive step (Art. 56 EPC):
`
`The auxiliary request 1 meets the requirements of Articles 52(1) and 56 EPC
`
`because of the following reasons:
`
`The closest state of the art is considered to be WO 98/28636 A1 . This
`
`document shows
`
`a method of controlling streamer positioning devices using a local control
`system located on each streamer positioning device (see page 5, 2°’ fu/I §),
`
`comprising:
`- towing an array of streamers (see page 1, 2”” full §) each having a plurality
`of streamer positioning devices there along (see page 1, 2'“ full §, figure 1),
`
`each of the streamer positioning devices having a wing used to control the
`lateral position of the streamer positioning device (see page 1, 3”’ full §, page
`5, 2”” full §, figure 1);
`
`— transmitting from the global control system location information to at least
`
`one local control system on at least one of the streamer positioning devices
`(page 5, 2”“ full §, page 6, 15‘ full §); and
`
`- adjusting the angle of the wing with a wing motor using the local control
`
`system (page 6, 15’ full §).
`EPO Form 2916 01.91TR|
`
`WESTERNGECO Exhibit 2071, pg. 7
`PGS v. WESTERNGECO
`IPR2014-01477
`
`

`
`15.10.2014
`
`Anmelde-Nr:
`
`§gP"°a“°“
`Demande n °:
`
`07 113 031.4
`
`3_6_1_2 The subject-matter of claim 1
`
`is distinguished therefrom by
`
`- using a control system distributed between a global control system located
`
`on or near a seismic survey vessel and a local control system located on
`
`each streamer positioning device, and
`
`- wherein the adjusting comprises calculating with a localized conversion
`
`program of the at least one local control system, a desired force on the at
`
`least one streamer positioning device using the location information, the
`
`desired force selected from a desired horizontal force, a desired vertical force,
`and both.
`
`These distinguishing features lead to a system with two distinct but
`
`cooperating control systems for controlling the position of the seismic
`
`streamer positioning device.
`
`The technical problem to be solved by the invention is therefore how to
`
`improve controlling the position of the streamer positioning devices.
`
`The subject-matter of claim 1 involves an inventive step within the meaning of
`
`Article 56 EPC , since it is not obvious for the person skilled in the art to arrive
`
`at this combination of technical features for solving the problem posed.
`
`The opponent argued that starting from document E2, the skilled person
`
`would be confronted with the technical problem of how to improve controlling
`
`of seismic streamers, and would consider E1 to obtain better data
`
`communication, thereby arriving at the subject-matter of claim 1. However,
`
`the opposition division could not follow that argumentation because:
`
`E2 (page 6, 15’ §) does not disclose a calculation of force with a localized
`
`conversion program. The force is not used to determine a desired common
`
`wing angle and a desired roll angle. The forces are acquired rather as a by-
`
`product by the combination of the angles. The opposition division
`
`acknowledges that when trying to solve the technical problem, the skilled
`
`person would try to use the teachings of E1 (column 4, lines 5-10, column 6,
`
`lines 38-45). However, a combination of the teachings of E2 and E1 would
`
`lead to a transfer of all intelligence to a global controller, as can be seen from
`
`E1 (column 4, lines 45-47), instead of a distributed control system with shared
`
`responsibilities.
`
`Therefore, the subject-matter of claim 1 involves an inventive step in the
`sense of Article 56 EPC.
`
`Therefore, the auxiliary request 1 meets the requirements of Articles 52(1)
`and 56 EPC.
`
`EPO Form 2916 01.91TR|
`
`WESTERNGECO Exhibit 2071, pg. 8
`PGS v. WESTERNGECO
`IPR2014-01477
`
`

`
`15.10.2014
`
`Decision
`
`Anmelde-Nr:
`
`§gP"°a“°“
`Demande n °:
`
`07 113 031.4
`
`The application as amended in auxiliary request 1 meets the requirements of
`
`the EPC. Subject to the stipulations of Rule 82 EPC, a maintenance of the
`
`patent in amended form according to auxiliary request 1
`
`is to be expected.
`
`EPO Form 2916 01.91TR|
`
`WESTERNGECO Exhibit 2071, pg. 9
`PGS v. WESTERNGECO
`IPR2014-01477