Ex Parte Delgado Marquez et al

Patent Trials and Appeals BoardMar 19, 2019

13857389 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/857,389 04/05/2013 6147 7590 03/21/2019 GENERAL ELECTRIC COMPANY GPO/GLOBAL RESEARCH 901 Main Avenue 3rd Floor Norwalk, CT 06851 FIRST NAMED INVENTOR Adolfo Delgado Marquez 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. 263562-1 9171 EXAMINER TRUONG, THOMAS ART UNIT PAPER NUMBER 2834 NOTIFICATION DATE DELIVERY MODE 03/21/2019 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): haeckl@ge.com gpo.mail@ge.com Lori.e.rooney@ge.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADOLFO DELGADO MARQUEZ, JEREMY DANIEL VAN DAM, KEN IVCAR SALAS NOBREGA, STEPHEN MASAO SAKAMOTO, and ROBERT LEE MARVELL III Appeal2018-003095 Application 13/857,389 Technology Center 2800 Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellant 1 seeks our review of the Examiner's decision to reject claims 1-15 and 17-20. We have jurisdiction. 35 U.S.C. Â§ 6. We reverse. 1 Appellant is the Applicant, General Electric Company, and is identified as the real party in interest. Br. 3. Appeal2018-003095 Application 13/857,389 SUBJECT MATTER The subject matter on appeal relates to electrical submersible pumps which are disclosed as being used in geothermal applications where "hot water is pumped from a geothermal field, frequently far beneath the surface of the earth, through a well bore to a thermal energy harvesting system at the surface." Spec. ,r 2. Such electrical submersible pumps are also disclosed as being used in hydrocarbon production operations where hydrocarbon- containing fluid from a hydrocarbon "reservoir enters the well bore and immerses the electric submersible pump. As the hydrocarbon-containing fluid around the electric submersible pump is drawn into the pump and propelled toward the surface for refining and use, additional fluid enters the well bore from the reservoir." Id. ,r 3. Independent claim 1 is illustrative of the claimed subject matter and is copied below with the key limitation at issue in this appeal italicized: 1. An electric submersible pump comprising: (a) an oil-filled electric motor comprising a dielectric oil, at least one stator, at least one rotor, and at least one herringbone patterned rotor bearing; (b) a pumping section comprising a plurality of impeller vanes; and ( c) a drive shaft mechanically coupled to the rotor and the impeller vanes; wherein the herringbone patterned bearing is submerged within the dielectric oil contained within the motor. Br. 15 ( emphasis added). Remaining independent claims 11 and 15 are also directed to an electronic submersible pump and require at least one herringbone patterned rotor bearing. Id. 16, 17. The Examiner rejected independent claims 1 and 15 under 35 U.S.C. Â§ 103(a) as being unpatentable over the combined disclosures of Brookbank 2 Appeal2018-003095 Application 13/857,389 (US 6,099,271, iss. Aug. 8, 2000), Parmeter (US 2009/0091202 Al, pub. April 9, 2009), Uesugi (US 6,834,997 B2, iss. Dec. 28, 2004), and Shibahara (US 7,431,505 B2, iss. October 7, 2008). Final 2-7. In rejecting independent claim 11, the Examiner adds the disclosure of Maier (US 5,215,384, iss. June 1, 1993). Id. at 11-13. For dependent claims 2-10, 12- 14, and 16-20, the Examiner relies on Brookbank, Parmeter, Uesugi, and Shibahara or with additional prior art not at issue in this appeal. Id. at 4--15. OPINION The issue raised in this appeal is whether the Examiner has established by a preponderance of evidence that the skilled artisan would have been motivated to replace the multi-lobed (e.g., tri-lobed) bearing contained in Brookbank's electrical submersible pump with the herringbone- patterned bearing disclosed by U esugi. We determine the Examiner has not made a sufficient showing that the skilled artisan would have been so motivated, and thus reverse the obviousness rejections of claims 1-20. Our reasoning follows. First, as correctly noted by Appellant (Br. 10), Shibahara "relates to spindle motors for information appliances such as computer disk drives (Shibahara Column 1, lines 11-19)." The Examiner has provided no evidence that establishes the interchangeable nature of bearings used in these information appliances with bearings used in an electrical submersible pump such as Brookbank's. Furthermore, the Examiner improperly relies on Shibahara and Appellants' own Specification to evince that multi-lobe bearings (such as those used in Brookbank' s electric submersible pump) and herringbone- 3 Appeal2018-003095 Application 13/857,389 patterned bearings (such as those used in Uesugi's spindle device) "are known equivalent hydrodynamic bearing[ s]." Final 4 ( citing Shibahara 3:50-56); Ans. 8-9. Shibahara merely lists different types of hydrodynamic bearings, including herringbone-shaped and multiple-lobed bearings, to be used in spindle motors for information devices. Shibahara 1: 11-19; 3: 50- 56; 4:8-11. The predecessor to our reviewing court has counseled, however, that inclusion in a list, without more, is an insufficient basis upon which to determine equivalence. See In re Ruff, 256 F .2d 590, 598-99 (CCP A 1958) ( explaining how equivalence cannot be demonstrated by mere existence within a listing of alternatives, such as a Markush group). The Examiner's reliance on Appellants' Specification (Ans. 8-9) to demonstrate equivalence fares no better. Paragraph 3 8 upon which the Examiner relies - similar to Shibahara - merely identifies multilobe bearings and herringbone pattern bearings, among others, in a list of alternative hydrodynamic rotor bearings. Spec. ,r 38. Even if this disclosure was sufficient to establish equivalence among these different types of electrical submersible pump bearings, it is legal error for the Examiner to rely on it to establish equivalence. Ruff, 256 F.2d at 598 ("To rely on an equivalence known only to the applicant to establish obviousness is to assume that his disclosure is a part of the prior art. The mere statement of this proposition reveals its fallaciousness.") In view of such deficiencies, we reverse the Examiner's obviousness rejections of claims 1-20. REVERSED 4