Ex Parte Guidry

Patent Trial and Appeal Board

May 4, 2018

12937538 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/937,538 10/12/2010 Kirk P. Guidry
64833 7590 05/07/2018
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
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.
OTD-031356US
(CMRN:0085)
CONFIRMATION NO.
3454
EXAMINER
BUTCHER, CAROLINE N
ART UNIT PAPER NUMBER
3676
MAIL DATE DELIVERY MODE
05/07/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIRK P. GUIDRY
Appeal2017-006991
Application 12/937,538
Technology Center 3600
Before: BRETT C. MARTIN, LYNNE H. BROWNE, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5, 7, 9, 10, 12-15, 17, 20-28, and 30-40. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
CLAIMED SUBJECT MATTER
The claims are directed to a mineral extraction system having a multi-
barrier lock screw. Claims 1, 5, 12, 20, 23, 25, and 27 are independent.
Appeal2017-006991
Application 12/937,538
Claim 1, reproduced below with paragraphs added, is illustrative of the
claimed subject matter:
1. A system, comprising:
a multi-barrier lock screw comprising
a body,
a tip portion fixed to the body and extending to a
distal end along an axis of the body,
a plurality of annular seals at different axial
locations about the body,
external threads about the body,
an external port, and
a pressure test passage in the body leading from the
external port to a testing region adjacent the plurality of
annular seals,
wherein the pressure test passage terminates at a
distance away from the tip portion such that the tip portion
is closed to the pressure test passage,
wherein the multi-barrier lock screw is configured
to provide a multi-barrier of protection against pressures
in a mineral extraction system via the plurality of annular
seals.
REJECTIONS 1
Claims 1, 2, 4, 32, 36, 39, and 40 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Le (US 4,650,225, iss. Mar. 17, 1987).
Claims 3, 5, 7, 9, 10, 12-15, 17, 20-28, 30, 31, 33-35, 37, and 38 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Le.
1 In response to Appellant's arguments, the Examiner withdrew the rejection
of claims 1--4, 32, 36, 39, and 40 as anticipated or obvious over Le and
entered a new grounds of rejection of these claims utilizing a modified
position concerning the teachings of Le. Ans. 2, 4. We only address the
pending rejections herein.
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Application 12/937,538
OPINION
Claims 1, 2, 4, 5, 7, 10, 12-15, 17, 20-27, and 32-35
Each of independent claims 1, 5, 12, 20, 23, 25, and 27 includes a
variation of the limitation: a "lock screw comprising a body, [and] a tip
portion fixed to the body." Dependent claims 9, 28, 30, 31, 36, 37, 38
further define the tip portion as being "fixed to the body as a one-piece
structure."
Appellant's Specification discusses the "body of the lock screw," and
though the "body" is not identified by reference numeral, it appears clear
that the "body" includes at least the shaft identified below in the marked-up
version of Figure 4. This is because the pressure test passage 7 6 is described
as passing through the body starting at the port 70, and the gland 64, as well
as seal 66, are described as being positioned around the body. Spec. ,r,r 27-
28, Abstract, Original claims 5, 6, 12-16, 18, 20, 23, 25. This is also
consistent with the position of Appellant expressed in the "Summary of
Claimed Subject Matter" where Appellant refers to reference numeral 40 for
both the lock screw and the body. Appeal Br. 3.
Figure 4 "is a cross-section of a dual barrier lock screw" and is
reproduced below, annotated to identify some of the features of the lock
screw. Spec. ,r 10.
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Appeal2017-006991
Application 12/937,538
FIG. 4
As can be seen in Figure 4, the shaft extends between a distal portion 62 and
a port 70 at the proximal end. The shaft is illustrated as a one-piece body
integral with the distal portion 62 and the port 70. Appellant refers to
reference numeral 62, the distal portion, as the claimed "tip portion."
Appeal Br. 3.
The Examiner finds that Le teaches "a body (20, 39, 31, 33, 37)" with
a tapered tip portion fixed to the body as "portion 20 is tapered on one end."
Final Act. 6 ( emphasis omitted); see also Ans. 2. The Examiner also finds
that "Le discloses the tip portion (20) is fixed to the body as a one-piece
structure" because "as depicted in Figure 2, all the components are secured
together to form one structure." Id. at 3 ( emphasis omitted).
Appellant argues that "the contact nose 20 [ of Le] is not fixed to the
packing gland nut 31, the shaft 33, and the bearing flange 37." Appeal Br.
14. Appellant "stress[ es] that the contact nose 20 is removable and thus is
not fixed to the body. A mere engagement of parts does not make those
parts fixed together." Id.; see also id. at 15.
Appellant's argument is not commensurate with the scope of the
independent claims. The independent claims require "a tip portion fixed to
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Application 12/937,538
the body" but do not require a single unitary body or that the components of
the body be fixed together, i.e., it is not required that Le's nose 20 be fixed
to the packing gland nut 31, the shaft 33, and/or the bearing flange 37. The
Examiner found that Le's nose 20 has a tip portion fixed thereto in the same
sense that Appellant non-numbered shaft has a tip portion 62 fixed thereto.
Thus, we are not informed of error in the Examiner's rejections of the
independent claims.
We also note that the Examiner found that the components 20, 39, 31,
33, 37, making up the body in Le, are "fixed" when secured together in a
place in the casing spool. Ans. 5. The claims place no temporal limitations
on when the body is "fixed." The fact that a component may be removed at
a later time does not differentiate the claims. See Appeal Br. 14--15 and
Reply Br. 4--5. Thus, we are not informed of error in the Examiner's
rejections of the independent claims.
Dependent claims 2, 4, 7, 10, 13-15, 17, 21, 22, 24, 26, and 32-35 are
either not separately argued, or Appellant relies on the arguments made with
respect to the independent claims for their patentability. Thus, we are not
informed of error in the Examiner's rejections of these claims for the same
reasons previously discussed.
Claims 9, 28, 30, 31, 36, 37, 38
As noted above, dependent claims 9, 28, 30, 31, 36, 37, 38 further
define the tip portion as being "fixed to the body as a one-piece structure."
Concerning these dependent claims, Appellant reiterates the arguments
concerning the meaning of the term "fixed" and then argues that the
Examiner also misinterprets the meaning of the term "one-piece." Appeal
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Appeal2017-006991
Application 12/937,538
Br. 21. Appellant argues that "one-piece ... is clearly different than
multiple pieces assembled together to form an assembly of pieces." Id.
Though it is possible to read the tip portion being "fixed to the body
as a one-piece structure" to merely require that body component 20 with its
tip be a one-piece structure, this would effectively read the limitation "one-
piece structure" out of the claim. This is because, as discussed above, the
independent claims already require that the tip portion be fixed to the body.
For this reason, we disagree with the Examiner that "[t]he term "one-piece"
does not suggest that the body is of unitary construction." Ans. 6. Though
the language could be more clearly worded, we construe dependent claims 9,
28, 30, 31, 36, 37, 38 as requiring that the body be a one-piece structure or,
in other words, a single unitary body. As the Examiner's rejections of these
dependent claims relies on an unsupported finding, we do not sustain the
rejections of these claims.
Claim 39
Claim 39 depends from claim 1 and adds "wherein the tip portion is
configured to rotate into a locking position." The Examiner finds that this is
taught by Le "(rotated to thread the component 20 into a locking position
with casing spool 13)." Ans. 3 (emphasis omitted).
Appellant correctly argues that Le teaches "linear translation" of the
contact nose 20 rather than rotation. Reply Br. 6; see Le col. 3:45--4:2, Fig.
2. Thus, we do not sustain the anticipation rejection of claim 39.
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Application 12/937,538
Claim 40
Claim 40 depends from claim 1 and adds "wherein the tip portion is
configured to be mechanically driven into a locking position." The
Examiner finds that "Le discloses the tip portion (20) is configured to be
mechanically driven into a locking position (mechanically driven via the
threaded action into a locking position with casing spool 13)." Ans. 3.
Appellant correctly argues that Le teaches hydraulic actuation of the
locking screw to advance the contact nose 20 rather than mechanical
actuation. Reply Br. 7; see Le col. 3:45--4:2, Fig. 2. Thus, we do not sustain
the anticipation rejection of claim 40.
Claim 3
Claim 3 depends from claim 1 and adds "wherein the tip portion
comprises a frustoconical end." The Examiner finds that Le "has one angled
surface" on the tip 20, but does not have a frustoconical end. Ans. 3. The
Examiner determines that "it would have been obvious ... to provide the tip
with a second angled surface such that the tip portion comprises a
frustoconical end to achieve the ability of the tip to be tapered such that it is
guided into the casing spool 13 and the groove 17a." Id.
As discussed above with respect to claims 39 and 40, Le teaches
"linear translation" of the contact nose 20 rather than rotational advancement
into engagement with the groove 17a. See Le col. 3:45--4:2, Fig. 2; Reply
Br. 7-8. Because there is no rotational movement in Le it is unclear how
modifying Le to have a frustoconical end would "achieve the ability of the
tip to be tapered such that it is guided into the casing spool 13 and the
groove 17a" as asserted by the Examiner. Ans. 3 (emphasis added).
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"[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We do not sustain
the rejection of claim 3 as the Examiner's reason to combine appears to
merely rely on hindsight.
DECISION
The Examiner's rejection of claims 1, 2, 4, and 32 under 35 U.S.C.
§ 102(b) is affirmed.
The Examiner's rejection of claims 36, 39, and 40 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner's rejection of claims 5, 7, 10, 12-15, 17, 20-27, and
33-35 under 35 U.S.C. § 103(a) is affirmed.
The Examiner's rejection of claims 3, 9, 28, 30, 31, 37, and 38 under
35 U.S.C. § 103(a) is reversed.
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-IN-PART
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