Ex Parte Bryant et al

Patent Trial and Appeal BoardMar 3, 2016

12731260 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121731,260 03/25/2010 99633 7590 03/07/2016 McDermott Will & Emery LLP The McDermott Building 500 North Capitol Street, N.W. Washington, DC 20001 FIRST NAMED INVENTOR Jason E. Bryant 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. CONFIRMATION NO. HES 2008-IP-010326Ul 1846 EXAMINER LOIKITH, CATHERINE A ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 03/07/2016 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): mweipdocket@mwe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON E. BRYANT, DAVIDE. MCMECHAN, THOMAS D. WELTON, MALCOLM S. TALBOT, and CORINE L. MCMECHAN Appeal2013-010968 Application 12/731,260 Technology Center 3600 Before WILLIAM A. CAPP, GEORGE R. HOSKINS and LEE L. STEPINA, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 1-3, 5-7, 9-12, and 14--19 as unpatentable under 35 U.S.C. Â§ 103(a) over Kiel (US 3,378,074, iss. Apr. 16, 1968) and of claims 4 and 20 over Kiel and Glasbergen (US 7 ,398,680 B2, iss. July 15, 2008) and of claim 8 over Kiel and Bolin (US 4,662,44 7, iss. May 5, 1987). We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. Appeal2013-010968 Application 12/731,260 THE rt.rVENTION Appellants' invention relates to transportation of fluids through tubular conduits. Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method comprising : introducing an inner fluid into a tubular conduit, the tubular conduit having an inner radius; and introducing a ring fluid into the tubular conduit, wherein the ring fluid is disposed annularly between the inner fluid and the interior of the tubular conduit, and wherein the flow of the ring fluid is laminar; and wherein the radial thickness of the ring fluid is about 0.1 % to about 20% of the inner radius of the tubular conduit. OPINION Unpatentability of Claims 1-3, 5-7, 9-12, and 14-19 over Kiel Appellants argue claims 1-3, 5-7, 9-12, and 14--19 as a group. Br. 8- 10. We select claim 1 as representative. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2015). The Examiner finds, and Appellants do not dispute, that Kiel discloses all of the elements of claim 1 except for the limitation directed to the particular range of the radial thickness of the ring fluid. Final Action 2. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have modified the radial thickness of the ring fluid to the claimed range. Id. The Examiner relies on the case of In re Aller, 220 F.2d 454, 456 (1955), for the proposition 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. Id. at 2-3. - 2 - Appeal2013-010968 Application 12/731,260 Appellants traverse the Examiner's rejection by arguing that reliance on Aller is inappropriate in this case. Br. 8. Appellants argue that the Examiner fails to explain how optimization using routine skill would have resulted in the claimed percentage range. Id. Appellants further argue that the Examiner's rejection is based on impermissible hindsight. Id. In response, the Examiner points out that, since Kiel discloses a tubular conduit, the tubular conduit inherently has an inner radius. Ans. 2. The Examiner also points out that, since Kiel discloses a ring fluid, the ring fluid inherently occupies a certain percentage of the inner radius of the tubular conduit. Id. Thus, concludes the Examiner, Kiel teaches the general conditions of the claim as required under the Aller analysis. Id. at 2-3. The Examiner also states that there is no criticality disclosed to the claimed range of percentages, noting that Appellants' Specification states that radial thickness outside of the claimed range may be suitable. Ans. 3, citing Spec. ,-r 43. Contrary to Appellants' argument, Aller does not require the Examiner to explain "how" the use of routine skill would result in optimization of a range. See In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (the prior art need not provide the exact method of optimization of a variable). In the instant case, Appellants' Specification essentially concedes that the claimed radial thickness of the ring fluid lacks criticality. For example, paragraph 43 of Appellants' Specification states, "[i]n other embodiments, the K value may be as high as 20%. However, radial thicknesses of the laminar phase ring outside this range also may be - 3 - Appeal2013-010968 Application 12/731,260 suitable for use in embodiments of the present invention." 1 Appellants present neither evidence nor persuasive technical reasoning that the claimed percentage range achieves an unexpected result. Thus, we agree with the Examiner that, even if Kiel teaches radial thickness outside of the claimed range, it would have been obvious to try different percentage ranges of the ring fluid within the tubular conduit. Ans. 3. Such merely entails a process of routine optimization that requires no more than ordinary skill in the art. Aller, 220 F.2d at 458 (No invention is involved in discovering optimum ranges of a process by routine experimentation). The Examiner's position is supported by a preponderance of the evidence and the Examiner's legal conclusion ofunpatentability is based on sound reasoning. Accordingly, we sustain the Examiner's unpatentability rejection of claims 1-3, 5-7, 9-12, and 14--19. Unpatentability of Claims 4 and 20 over Kiel and Glasbergen Claim 4 depends from independent claim 1. Claims App. Claim 20 depends from independent claim 15. Id. Appellants do not argue for the separate patentability of claims 4 and 20 apart from arguments presented with respect to claims 1 and 15 which we have previously considered. We sustain the rejection of claims 4 and 20. 1 The K value is "the radial thickness of the laminar phase ring as a percentage of the radius of the tubular conduit." Spec. i-f 43. - 4 - Appeal2013-010968 Application 12/731,260 Unpatentability of Claim 8 over Kiel and Bolin Claim 8 depends from independent claim 1. Claims App. Appellants do not argue for the separate patentability of claim 8 apart from arguments presented with respect to claim 1 which we have previously considered. We sustain the rejection of claim 8. DECISION The decision of the Examiner to reject claims 1-12 and 14--20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED - 5 -