Ex Parte Guidry et al

Patent Trial and Appeal Board

Oct 23, 2017

13000359 (P.T.A.B. Oct. 23, 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.
13/000,359 12/20/2010 Kirk Guidry OTD-031178US
(CMRN:0086)
2584
64833 7590 10/24/2017
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
BAGNELL, DAVID J
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
10/24/2017 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 GUIDRY and DENNIS P. NGUYEN
____________

Appeal 2015-005115
Application 13/000,3591
Technology Center 3600
____________

Before STEFAN STAICOVICI, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Kirk Guidry and Dennis P. Nguyen (“Appellants”) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision in the Final Action (dated
May 28, 2014, hereafter “Final Act.”) rejecting claims 1, 4–7, 11, 12, 17–23,
27, 28, and 32–44.2 We have jurisdiction over this appeal under 35 U.S.C. §
6(b).

1 According to Appellants’ Appeal Brief (hereafter “Appeal Br.”), filed Oct.
28, 2014, Cameron International Corporation is the real party in interest.
Appeal Br. 2.
2 Claims 2, 3, 8–10, 13–16, 24–26, and 31 are cancelled. Appeal Br. 2.
Claim 30 is allowed, and claim 29 is objected to, but deemed allowable if
written in independent form. Id.; see also Final Act. 21.
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SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellants’ invention relates to a mineral extraction system. Spec.
para. 22.
Claims 1, 17, 27, and 43 are independent. Claim 1 is illustrative of
the claimed invention and reads as follows:
1. A system, comprising:
a fluid-driven adapter, comprising:
a tubular body;
a locking mechanism coupled to the tubular body,
wherein the locking mechanism is configured to secure
the fluid-driven adapter to a body of a wellhead assembly
to block axial movement of the fluid-driven adapter,
wherein the locking mechanism is responsive to fluid
pressure to move a locking structure relative to the
tubular body between locked and unlocked positions
between the fluid-driven adapter and the body of the
wellhead assembly; and
a moveable sleeve coupled to the tubular body,
wherein the moveable sleeve has an axial range of
movement relative to the tubular body in response to
fluid pressure, wherein the axial range of movement of
the moveable sleeve is configured to move an isolation
mandrel disposed in the wellhead assembly between a
first position and a second position.

REJECTIONS
I. The Examiner rejected claims 1, 4, 5, 7, 11, 27, 28, and 32–43
under 35 U.S.C. § 103(a) as being unpatentable over Chan et al.
(US 2009/0090515 A1, pub. Apr. 9, 2009, hereafter “Chan”)
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and Bailey et al. (US 2006/0108119 A1, pub. May 25, 2006,
hereafter “Bailey”).
II. The Examiner rejected claims 6, 17–22, 39, and 44 under 35
U.S.C. § 103(a) as being unpatentable over Chan, Bailey, and
Borak (US 2007/0079990 A1, pub. Apr. 12, 2007).
III. The Examiner rejected claims 1 and 12 under 35 U.S.C. §
103(a) as being unpatentable over Chan, Bailey, and Koleilat et
al. (US 2010/0051261 A1, pub. Mar. 4, 2010, hereafter
“Koleilat”).
IV. The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as
being unpatentable over Chan, Bailey, Borak, and Kwasniewski
et al. (US 7,069,987 B2, iss. July 4, 2006, hereafter
“Kwasniewski”).

ANALYSIS
Rejection I
Claims 1, 4, 5, 7, 11, 32–38, and 42
Appellants have not presented arguments for the patentability of
claims 4, 5, 7, 11, 32–38, and 42 apart from claim 1. See Appeal Br. 9–14.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1
as the representative claim to decide the appeal of the rejection of these
claims, with claims 4, 5, 7, 11, 32–38, and 42 standing or falling with claim
1.
The Examiner finds that Chan discloses most of the limitations of
claim 1, but fails to disclose a locking mechanism that moves a locking
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structure in response to fluid pressure between locked and unlocked
positions, as called for by claim 1. See Final Act. 6–10. Although the
Examiner finds that Chan discloses pins 83 (lock screws) that function as
locking structures, the Examiner further finds that Bailey discloses a locking
mechanism that moves locking pins 304, in response to fluid pressure,
between locked and unlocked positions. Id. at 10 (citing Bailey, paras. 9, 10,
49, 58–60, Figs. 3, 6, 7). The Examiner concludes that it would have been
obvious for a person of ordinary skill in the art
to modify the system of Chan such that the locking mechanism
is responsive to fluid pressure to move a locking structure
between the locked and unlocked positions between the fluid-
driven adapter and the body of the wellhead assembly, in light
of the Bailey teachings, to improve operational safety of
personnel by precluding the need for manual locking and
unlocking.

Id. at 12.
Appellants argue that that the Examiner has not adequately explained
how a person ordinarily skilled in the art “would modify the assembly of
Chan to replace the lock screws [83] with a fluid-driven locking
mechanism[,]” as taught by Bailey. Appeal Br. 11. Appellants explain that
such a modification “would require a substantial redesign of the assembly of
Chan” because Chan’s “isolation sleeve 79 . . . [is] in a closely fit and sealed
arrangement” and, thus, “Chan does not provide any space for incorporation
of a fluid-driven locking mechanism.” Id. Hence, according to Appellants,
even if Chan and Bailey could be hypothetically combined with
one another, the resulting combination would not necessarily
integrate both a fluid driven locking mechanism and a fluid
driven isolation mandrel by coupling both the locking
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mechanism and the isolation mandrel to a common structure,
e.g., the claimed tubular body. Instead, even if Chan and
Bailey were hypothetically combined with one another, the
fluid driven locking mechanism and the fluid driven isolation
mandrel would most likely be completely separate structures,
i.e., no integration or coupling into a single adapter.

Id. at 10–11; see also Reply Brief 6–7 (dated Apr. 9, 2015, hereafter “Reply
Br.”)
We do not agree with Appellants’ position because the Examiner finds
that Bailey discloses a hydraulically activated locking mechanism including
hydraulic chamber and line 610, 660, lock rings or pins 304 (retainer), and
piston 302 coupled to tubular body 620. See Final Act. 10–11; see also
Bailey, Fig. 6. As such, upon modifying Chan’s system to replace lock
screws 83 with Bailey’s hydraulically activated locking mechanism, we
agree with the Examiner that both of Bailey’s locking mechanism and
Chan’s seal carrier 87 would be coupled to the same tubular body, namely,
sleeve 79. Examiner’s Answer 3 (dated Feb. 9, 2015, hereafter “Ans.”).
Specifically, we note that locking piston 302, which is part of Bailey’s
locking mechanism, is coupled to tubular body 620 regardless of whether
retainer 304 is in a locked position or an unlocked position. See Bailey,
Figs. 6, 7. Therefore, upon modifying Chan’s system to include Bailey’s
locking mechanism, the locking mechanism would be coupled to Chan’s
sleeve 79, as called for by claim 1. See Bailey, Figs. 6, 7.
We further agree with the Examiner that Chan already discloses the
“use of fluid driven pistons and their associated actuation passages and
seals.” Ans. 4. The Examiner is also correct in finding that Bailey discloses
a locking mechanism arrangement including hydraulic chamber 610, lock
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ring or pins 304, and piston 302 movably coupled to tubular body 602,
located within a bore of tubular body 620. Final Act. 10; see also Bailey,
Fig. 6. Hence, some judgment and mechanical skill may be required to
select the appropriate sizing of an axial bore in tubular body 79 and a recess
in adapter body 75 of Chan to position Bailey’s locking piston and pin 302,
304 and hydraulic chamber 610 in order to arrive at the recited combination.
However, this does not necessarily mean that such combination constitutes a
nonobvious invention. Graham v. John Deere Co. of Kansas City, 383 US
1, 10–12 (1966) (discussing Hotchkiss v. Greenwood, 11 How. 248 (1851)).
Therefore, Appellants’ conclusion that the resulting fluid driven locking
mechanism and fluid driven isolation mandrel of Chan, as modified by
Bailey, would not be coupled to the same member is unsupported attorney
argument and cannot take the place of evidence in the record, as discussed
supra. See Reply Br. 7; see also In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997).
Appellants further argue that Chan’s disclosure of using hydraulics for
piston 89 and seal carrier 87, but not for a locking mechanism, instead
opting for lock screws 83, “is evidence that one of ordinary skill in the art
would not find it obvious to replace lock screws 83 with a fluid-driven
locking mechanism.” Appeal Br. 11–12. Appellants further assert that
“[n]either Ch[a]n nor Bailey contemplates the use of hydraulics for both
mechanisms (e.g., fluid driven locking mechanism and fluid-driven isolation
mandrel.).” Id. at 12. According to Appellants, because Bailey’s drilling
equipment is not related to isolation mandrels, “the Examiner’s reasoning
based on health and safety concerns in [the] context of drilling equipment
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does not appear to be reasonably related to isolation mandrels,” and, thus,
the Examiner’s reasoning lacks rational underpinning. Id. at 13. Appellants
explain that because “the isolation mandrel or sleeve protects the equipment
from extreme pressures associated with fracturing operations . . . it would
not be installed after starting fracturing operations” and, thus, “the extreme
pressures associated with fracturing operations would not yet be present.”
Reply Br. 10.
We are not persuaded because nonobviousness cannot be established
by attacking the disclosures of Chan and Bailey individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The proper inquiry
is whether the Examiner has articulated adequate reasoning based on a
rational underpinning to explain why a person of ordinary skill in the art
would have been led to combine the teachings of Chan and Bailey. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that “rejections
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” (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Although we appreciate Appellants’ position that installation of an
isolation sleeve or mandrel occurs before starting fracturing operations,
nonetheless, the Examiner is correct in that
[t]hose having ordinary skill in the art readily appreciate that
during assembly . . . wellheads and associated surface
equipment pose appreciable risks to those in close proximity
thereto. Such risks include being struck by swinging or falling
components during assembly or tear-down. Further, accidental
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pressure/energy release during operations due to equipment
fatigue and/or misuse is also of great concern.

Ans. 6 (emphasis added). We agree with the Examiner that because Chan
discloses installing sleeve 79 using a running tool, “the wellhead assembly . .
. in Fig. 4 [of Chan] would be containing any pressure present in the
production casing, and manually actuating the lock pins 83 during the
alignment of the tubular body [79] subjects the personnel to danger due to
this close proximity.” Id. at 7. We further agree with the Examiner that a
person of ordinary skill in the art would readily understand that “[b]y
replacing the manually actuated lock pins [83] of Chan with the fluid driven
locking mechanism taught in Bailey, personnel would not need to be
adjacent the wellhead during this operation.” Ans. 7. Therefore, we do not
agree with Appellants’ position that the safety requirements of Bailey’s
drilling equipment are somehow not relevant to Chan’s system. See Appeal
Br. 13; Reply Br. 10.
Accordingly, we are not persuaded by Appellants’ argument that “the
Examiner is improperly relying on hindsight reconstruction.” See Appeal
Br. 12. Here, the Examiner’s modification is an improvement to Chan’s
system to replace manual lock screws 83 with Bailey’s remotely actuated
hydraulic locking system in the same way as taught by Bailey, namely, to
promote safety of personnel, and the modification is well within the skill of
a person of ordinary skill in this art. KSR, 550 U.S. at 417 (“[I]f a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
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her skill.”). Hence, the Examiner has provided an adequate reasoning with
rational underpinning to combine the teachings of Chan and Bailey, namely,
“to improve operational safety of personnel by precluding the need for
manual locking and unlocking.” Final Act. 12; see In re Cree, 818 F.3d 694,
702, n.3 (Fed. Cir. 2016).
Appellants further argue that “Bailey does not qualify as analogous
art.” Appeal Br. 14 (underlining omitted); see also Reply Br. 8 (“The
Examiner relied on Bailey for a hydraulic locking mechanism, yet Bailey is
not in the art of isolation sleeves or mandrels.”). According to Appellants,
Bailey relates to drilling equipment and safety concerns during drilling
operations, whereas Appellants’ invention relates to isolation mandrels and
controlling fluid pressures during fracturing operations. See Appeal Br. 14.
The Federal Circuit has explained that “[t]he analogous art inquiry is a
factual one, requiring inquiry into the similarities of the problems and the
closeness of the subject matter as viewed by a person of ordinary skill in the
art.” Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed.
Cir. 2014). “Criteria for determining whether prior art is analogous may be
summarized as ‘(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.’” Id.
at 1359 (citing In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). In this
case, Appellants’ Specification describes the problem of relieving pressures
during operations of fracturing process in a mineral extraction system” as
including “locking the adapter and the mandrel to prevent undesired axial
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movement.” Spec. para. 21. Appellants do not explain persuasively why
locking and unlocking fluid driven adapter 300 relative to body 310, as
taught by Bailey, is so different from locking and unlocking a “fluid-driven
adapter to a body of a wellhead assembly,” as called for by claim 1, that
Bailey would constitute non-analogous art. Indeed, the Examiner is correct
in that both Bailey and claim 1 are directed to “the process by which a
wellbore tool can axially [be] locked within a wellbore during operations,”
and as such, Bailey is reasonably pertinent to the problem faced by
Appellants. See Ans. 8. Whether the locking mechanism of Bailey is used
in a system for drilling operations or for fracturing operations is not relevant
because, in either case, Bailey’s locking mechanism axially locks and
unlocks a tool relative to a body. Hence, the Examiner correctly determines
that Bailey is analogous art, and properly considers its teachings in
determining that the subject matter of claim 1 would have been obvious.
Finally, Appellants argue that the Examiner’s modification of Chan’s
system to include Bailey’s remotely activated hydraulic locking mechanism
changes the principle of operation of Chan, “which uses manual lock screws
83 to secure sleeve 79 while using hydraulics to move the seal carrier 87.”
Reply Br. 9.
We do not agree with Appellants’ argument because Chan’s isolation
sleeve operates to “isolate[] the high pressure, abrasive fracturing fluid from
those portions of the wellhead that are most susceptible to damage from the
high pressures and abrasive fluids used in well fracturing operation.” Chan,
para. 3. Modifying Chan’s system to include Bailey’s remotely activated
hydraulic locking mechanism would not change the principle of operation of
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Chan’s system because it would still function to protect those areas
susceptible to damage from the high pressures and abrasive fluids during
well fracturing operations. Specifically, hydraulic pressure supplied to
adapter port 95 will still flow through sleeve port 93 into chamber 91 to
lower seal carrier 87 relative to isolation sleeve 79 and energize seal 99 in
sealing contact with rim 73 of casing 69, thereby isolating the fracturing
fluid from the body of wellhead 61. See Chan, paras. 28, 29, Fig. 4.
Appellants have not explained persuasively how modifying Chan’s system
to include Bailey’s remotely activated hydraulic locking mechanism would
change the principle of operation described supra.
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of claim 1 as unpatentable over Chan and Bailey.
Claims 4, 5, 7, 11, 32–38, and 42 fall with claim 1.

Claims 17, 27, 28, 39–41, and 43
Appellants make the same arguments as discussed supra in the
rejection of claim 1. See Appeal Br. 14–29. Therefore, for the same reasons
as discussed above, we also sustain the rejection of claims 17, 27, 28, 39–41,
and 43 over the combined teachings of Chan and Bailey.

Rejections II–IV
Appellants rely on the same arguments as discussed supra in
Rejection I. See Appeal Br. 29–30. Therefore, for the same reasons as
discussed above, we also sustain Rejections II–IV.

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SUMMARY
The Examiner’s decision to reject claims 1, 4–7, 11, 12, 17–23, 27,
28, and 32–44 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED