Ex Parte Braithwaite

Patent Trial and Appeal BoardAug 31, 2017

13031502 (P.T.A.B. Aug. 31, 2017)

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. 13/031,502 02/21/2011 Julian Braithwaite 111078-024000US 5066 102197 7590 09/05/2017 Chamberlain, Hrdicka, White, Williams & Aughtry, P.C. 1200 Smith Street, 14th Floor Houston, TX 77002 EXAMINER LEMBO, AARON LLOYD ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 09/05/2017 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): Patents @ chamberlainlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JULIAN BRAITHWAITE Appeal 2015-005218 Application 13/031,502 Technology Center 3600 Before ANNETTE R. REIMERS, JEFFREY A. STEPHENS, and GORDON D. KINDER, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims 1—13. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We are informed that the real party in interest is Cameron International Corporation. Appeal Br. 3 (Nov. 14, 2014). Appeal 2015-005218 Application 13/031,502 CLAIMED SUBJECT MATTER The claims are directed to a system and method for high-pressure, high-temperature tieback. Spec. 1—2. Claims 1—13 are pending. Claims 1 and 9 are independent, and claim 1 is reproduced below to illustrate the claimed subject matter. 1. A high-pressure, high-temperature tieback system comprising: a production casing tieback tool comprising a ratchet-latch sleeve disposed in a recessed portion of an annular extension of increased wall thickness of the production casing tieback tool; and a production casing mudline hanger disposed about the production casing tieback tool; wherein the production casing tieback tool is configured to directly engage the production casing mudline hanger; and wherein the ratchet-latch sleeve is configured to directly engage a threaded axial segment of a tubular other than the production casing mudline hanger. The prior art relied upon by the Examiner in rejecting the claims on REJECTIONS I. Claims 1, 2, 4, and 52 are rejected under 35 U.S.C. § 102(b) as being anticipated by Nguyen. 2 Claims 9 and 12—13 were inadvertently included in the heading for this rejection in the Non-Final Action. See Ans. 8. REFERENCES appeal is: Vanderford Nguyen US 6,328,108 B1 Dec. 11,2001 US 6,516,887 B2 Feb. 11,2003 2 Appeal 2015-005218 Application 13/031,502 II. Claims 1, 5—11, and 13 are rejected under 35 U.S.C. § 102(b) as being anticipated by Vanderford. III. Claim 3 is rejected under 35 U.S.C. § 103(a) as being obvious in view of Nguyen. IV. Claim 12 is rejected under 35 U.S.C. § 103(a) as being obvious in view of Vanderford. OPINION Rejection I Appellant argues claims 1, 2, 4, and 5 as a group. Appeal Br. 10-13. We select claim 1 as representative, and claims 2, 4, and 5 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellant first argues that claim 1 is not anticipated by Nguyen because Nguyen does not disclose a “ratchet-latch sleeve” and “fails to include any teeth or ratcheting motion as is common with a ratcheting mechanism.” AppealBr.il. The Examiner finds that the claims require a “sleeve be ‘configured’ to engage a threaded axial segment.” Ans. 8, quoting Appeal Br. 17 (Claims App.). The Specification does not describe any structural requirements for “ratchet-latch sleeve,” nor does it provide any functions for a “ratchet-latch sleeve.” Instead, the term appears only in the Summary of Disclosed Embodiments and in the claims. The Examiner looked to the functional description in the Specification paragraph 18 and concluded that Appellant used “ratchet” to mean “moving ‘downward relative to’ and then locking in place” (Non-Final Act. 4). In the absence of any structural or functional description of “ratchet-latch sleeve,” the Examiner was correct to give the term the broadest reasonable interpretation 3 Appeal 2015-005218 Application 13/031,502 to “ratchet.” We do not see error in the Examiner’s finding that the rings 60 and 62 of Nguyen are a ratchet-latch sleeve because these elements have “an external mating surface which ‘ratchets downward’ into the internal mating surface of element 4.” Id. Appellant argues in the Reply that Nguyen does not teach “ratcheting motion” which is “fundamental for the ratchet-latch sleeve of the claimed invention.” Reply Br. 5. Although the Specification has some suggestions of how a ratchet-latch might work (see Spec. H 19, 21), a ratchet-latch sleeve is not described. As for the ratchet-latch, it appears in one embodiment that it may operate as a pawl (| 19), or in another embodiment that it may simply be threaded into engagement with another structure (| 21). The Specification has no description of ratcheting motion or any other asserted fundamental aspect of the ratchet-latch sleeve. For these reasons, we do not find this argument persuasive. Next, Appellant argues that a “threaded segment includes a screw thread for a corresponding threaded segment to be rotated with into engagement” and that direct engagement by a ratchet-latch sleeve with such a segment is required by claim 1. Appeal Br. 11 (emphasis added); see also Reply Br. 5 (repeating argument). Appellant argues that because Nguyen shows a segment with an annular recess on a surface wellhead, it can “hardly . . . be construed as a threaded axial segment.” Id. Appellant contends that because the wellhead 4 on Nguyen does not have a screw thread, it does not have a threaded segment, and so Nguyen does not disclose the claimed ratchet-latch sleeve directly engaging a threaded segment. Id. The Examiner notes that Appellant has not positively recited that “threading is strictly screw-type and engaged upon rotation.” Ans. 8. The 4 Appeal 2015-005218 Application 13/031,502 Examiner finds that “threading” requires only multiple grooves and that Nguyen shows this with the stepped groove arrangement that receives the ratchet-latch members 60 and 62. Non-Final Act. 4. This finding is consistent with our examination of Appellant’s Figures 3a and 4, which reveal a ratchet-latch sleeve in cross-section with an equal number of rectangular recesses 316a, 416a on each side, and horizontally aligned with one another. The wall of the member 306 it engages has the same shape 316b, 416b. Spec. 18, 24, Figs. 3a, 4. These recesses appear to be, within the limits of the discemable figures, parallel, rectangular grooves, not a helical thread. The recesses 316a,b, 416a,b are also hard to reconcile with Figure 3, which shows the ratchet-latch sleeve 310 as having an outside surface that is free of any indication that threads of any conformation are present. Moreover, Appellant’s argument above was not that a helical thread was required, but rather that such a thread was included in the meaning of “threaded.” On this record, we cannot say that the Examiner’s interpretation of “threaded” is erroneous or that the finding that Nguyen shows a ratchet- latch sleeve directly engaging a threaded segment is in error. In the Reply, Appellant again takes up the argument that Nguyen does not show a ratchet-latch sleeve adapted to engage a threaded axial segment, contending first that the Examiner improperly found merely that the ratchet- latch of Nguyen was capable of directly engaging a threaded section. Reply Br. 6. Appellant contends that “capable of’ is not the proper standard under In re Giannelli, 739 F.3d 1375, 1379-1380 (Fed. Cir. 2014).3 This argument 3 But see In re Chudik, No. 2016-2673 (Fed. Cir. Aug. 25, 2017) (non- precedential), slip op. 4, seemingly using the terms “configured for” and “capable of’ interchangeably. 5 Appeal 2015-005218 Application 13/031,502 ignores the Examiner’s repeated finding that in Nguyen the ratchet latch is “configured to” directly engage a threaded axial segment. Non-Final Act. 5, 6, 9; Ans. 3, 4. In this context, a device that is “configured to” do something is also “capable of’ doing the same thing. Appellant has not persuaded us that an improper standard was applied. Appellant next argues that “tieback tool and hanger are specific terms of art” and that when the claims are construed with this in mind, Nguyen does not anticipate. Appeal Br. 12—13. Appellant first contends that the claimed subject matter relates to a tieback system for subsea mudline suspensions. Id. To carry the terms-of-art argument forward, Appellant cites to, but does not quote from, a Society of Petroleum Engineers International (SPEI) website.4 Appellant argues that the device 50 in Nguyen is not a tieback tool but rather, as Nguyen itself terms it, a hanger. Id. at 13. Moreover, Appellant argues, the outer sleeve 14 in Nguyen does not meet the definition of a hanger because it does not transfer a load to a structure and the earth. Id. The Examiner agrees with respect to the definition of “hanger,” citing the SPEI glossary: “<2 mechanical device that suspends all or part of the weight from a tubular string, transferring the load to the wellhead and earth.” Ans. 9. However, the Examiner finds no standard definition for tieback tool, nor does he find it a commonly used term in the patent literature generally or the sub-sea well art in particular. Id. at 10. Instead, the Examiner turns to Appellant’s Specification and finds a tieback tool is “a 4 Appellant also refers to figures that appear to have been omitted from the Appeal Brief. Appeal Br. 12. It appears the omitted figures may have had something to do with tieback tools, but we cannot speculate and must ignore this obviously incomplete argument. 6 Appeal 2015-005218 Application 13/031,502 device which ‘allows the well to be . . . tied back to the surface at a later time [using a tieback tool].’” Ans. 10, quoting Spec. 115. Based on this usage, the Examiner concludes that the definitions of tieback tool and hanger are “close enough in scope that Appellant’s tieback tool appears to be nothing more than a hanger.” Id. The Examiner then provides a side by side comparison of Appellant’s device and the Nguyen device showing the disputed claim terms applied to each. In the Reply, Appellant simply refers back to the definitional arguments made earlier. Reply Br. 6. We are not persuaded that the claim terms have been misinterpreted by the Examiner or that the Examiner’s interpretation is overly broad. Instead, the Examiner is using the terms “hanger” and “tieback tool” as Appellant used them in the Specification, and we have not been shown error in the Examiner’s approach or result. For the reasons set forth above, we are not persuaded of error in the rejection of claim 1 as anticipated by Nguyen, and claims 2, 4, and 5, which fall with claim 1. Rejection II Appellant argues claims 1, 5—11, and 13 as a group. Appeal Br. IS IS. We select claim 1 as representative, and claims 5—11, and 13 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that all limitations of claim 1 are met in Vanderford. Non-Final Act. 6; Ans. 12. Specifically, the Examiner finds that the two unnumbered ring elements “akin to elements 60 and 62 of Nguyen form a sleeve member about element 14 upon which they are shown 7 Appeal 2015-005218 Application 13/031,502 to be located within a recess.” Ans. 12. In the Non-Final Action, the Examiner finds that the sleeve member “is configured to directly engage a threaded axial segment of a tubular (Vanderford — wellhead, not shown).” Non-Final Act. 6. The Examiner goes on to say that the ring elements “are further shown to engage what is interpreted to be a threaded segment, also akin to the previously annotated threaded segment of Nguyen.” Ans. 12. “The two shoulders of Vanderford have been interpreted as a threaded segment since Appellant has not positively recited that the threading is strictly screw-type and engaged upon rotation.” Id. Appellant concedes that Vanderford at least implicitly discloses grooves in the wellhead that receive ring elements. Appeal Br. 14. Specifically, Appellant describes Vanderford as follows: In FIG. 1 of Vanderford, a locking ring of an engagement assembly is used to move along the peripheral tapered shoulder 18 of the tension hanger 14 to the land the locking ring and an adjacent of load ring into grooves within a wellhead (not shown). Appeal Br. 14. Appellant argues that Vanderford does not disclose a ratchet latch sleeve or direct engagement of a ratchet latch sleeve with a threaded axial segment. Id. Appellant argues [specifically, Vanderford also fails to teach that the grooves of the wellhead include a threaded axial segment (as Vanderford fails to show the wellhead whatsoever), much less with the locking ring or the load ring positioned about the tension hanger 14 to have the ratcheting surface to directly engage this threaded axial segment. Id. This is the same argument made in connection with Nguyen, which we found unpersuasive. 8 Appeal 2015-005218 Application 13/031,502 Appellant also repeats the definitional arguments about hanger and tieback, incorporating the arguments made in connection with Nguyen. Appeal Br. 14—15. As discussed above in connection with Nguyen, we do not find error in the Examiner’s interpretation of these terms nor in his application of the claim terms to the Nguyen reference, and so we do not find error in the interpretation of these claim terms as applied to Vanderford. For the foregoing reasons, we find no error in the rejection of claim 1 as anticipated by Vanderford, and claims 5—11 and 13, which fall with claim 1. Rejection III Appellant argues claim 3 is not obvious in view of Nguyen for the same reasons that claim 1 is asserted patentable over Nguyen. Appeal Br. 15. For the reasons stated above in connection with claim 1 in Rejection I, we are not persuaded of Examiner error in the rejection of claim 3. Rejection IV Appellant argues claim 12 is not obvious in view of Vanderford for the same reasons that claim 9, from which claim 12 depends, is asserted patentable over Vanderford. Appeal Br. 15. For the reasons stated above in connection with claims 1 and 9 in Rejection II, we are not persuaded of Examiner error in the rejection of claim 12. DECISION The Examiner’s rejection of claims 1—13 is affirmed. 9 Appeal 2015-005218 Application 13/031,502 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 10