Ex Parte Harper et al

Patent Trial and Appeal BoardNov 29, 2018

14487812 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/487,812 09/16/2014 Jason M. Harper 44639 7590 12/03/2018 CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC 20 Church Street 22nd Floor Hartford, CT 06103 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. PRF4-57947-US-NP 1338 EXAMINER RUNYAN, RONALD R ART UNIT PAPER NUMBER 3672 NOTIFICATION DATE DELIVERY MODE 12/03/2018 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): usptopatentmail@cantorcolbum.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON M. HARPER, JAMES G. KING, and JAMES SCOTT SANCHEZ Appeal 2018-003173 Application 14/487 ,812 Technology Center 3600 Before BRETT C. MARTIN, JILL D. HILL, and BRENT M. DOUGAL, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2018-003173 Application 14/487,812 STATEMENT OF CASE Appellants appeal under 35 U.S.C. Â§ I34(a) from the Examiner's rejection of claims 15-17, which constitute all the claims pending in this application. Claims 1-14 were canceled during prosecution. App. Br. 8. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. THE INVENTION Appellants' claims are directed generally to a "tubular assembly including a sliding sleeve having a degradable locking element." Title. Claim 15, reproduced below, is illustrative of the claimed subject matter: 15. A method of operating a downhole slidable sleeve compnsmg: running a tubular assembly including at least one tubular having one or more openings into a wellbore; shifting a slidable sleeve carried by the at least one tubular from a first configuration to a second configuration; locking the slidable sleeve in the second configuration with a degradable locking member after the slidable sleeve is shifted from the first configuration; and exposing the degradable locking member to a downhole fluid causing the degradable locking member to degrade. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Jessup et al. ("Jessup") Badalamenti et al. ("Badalamenti") us 3,970,147 US 2006/0042798 Al 2 July 20, 197 6 Mar. 2, 2006 Appeal 2018-003173 Application 14/487,812 REJECTION The Examiner made the following rejection: Claims 15-17 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Jessup and Badalamenti. Final Act. 3. ANALYSIS Appellants argue that the Examiner's combination of Jessup and Badalamenti is improper because Jessup teaches away from the proposed combination by stating that "[i]t would be a most disagreeable task to have to separate thousands of feet of pipe sections full of well fluids due to the absence of a properly functioning reverse circulation valve capable of allowing the fluids to 'dump' into the well." See, e.g., App. Br. 5 (citing Jessup col. 1, 11. 33-37). In the Examiner's proposed combination, the addition of a degradable locking member would create just such an "[im]properly functioning reverse circulation valve." We agree with Appellants that this amounts to a clear teaching away from the Examiner's combination. Faced with this teaching away, the Examiner, as Appellants point out, provides "a number of arguments regarding why it might be obvious to form a locking ring from a degradable material, but has not disclosed why one of ordinary skill in the art would be motivated to do so in the case of Jessup." Reply Br. 2. We further agree with Appellants that "[t]he Examiner has not provided any argument, evidence or rational[ e] to support that one of ordinary skill would consider it obvious to allow the valve in Jessup et al. to move to a closed configuration following a circulation procedure." Reply 3 Appeal 2018-003173 Application 14/487,812 Br. 3. Absent some evidence showing that Jessup could be used in other manners that would not implicate the teaching away, beyond the mere speculation provided by the Examiner, we cannot sustain the rejection. DECISION For the above reasons, we REVERSE the Examiner's decision to reject claims 15-1 7. REVERSED 4