Ex Parte Guidry et alDownload PDFPatent Trial and Appeal BoardOct 23, 201713000359 (P.T.A.B. Oct. 23, 2017) Copy Citation 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. Appeal 2015-005115 Application 13/000,359 2 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”) Appeal 2015-005115 Application 13/000,359 3 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 Appeal 2015-005115 Application 13/000,359 4 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 Appeal 2015-005115 Application 13/000,359 5 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 Appeal 2015-005115 Application 13/000,359 6 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 Appeal 2015-005115 Application 13/000,359 7 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 Appeal 2015-005115 Application 13/000,359 8 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 Appeal 2015-005115 Application 13/000,359 9 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 Appeal 2015-005115 Application 13/000,359 10 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 Appeal 2015-005115 Application 13/000,359 11 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. Appeal 2015-005115 Application 13/000,359 12 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 Copy with citationCopy as parenthetical citation