Ex Parte LaGrange et al

Patent Trial and Appeal BoardApr 28, 2016

11759126 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111759, 126 0610612007 Timothy Edward LaGrange 87627 7590 05/02/2016 Mossman, Kumar & Tyler PC P.O. Box 421239 Houston, TX 77242 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. COR-1103-US 5745 EXAMINER CLEMENT, MICHELLE RENEE ART UNIT PAPER NUMBER 3641 NOTIFICATION DATE DELIVERY MODE 05/02/2016 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): docket@mktlaw.us.com tthigpen@mktlaw.us.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY EDWARD LAGRANGE, LYLE W. ANDRICH, CORY D. DAY, and DAN W. PRATT Appeal2014-004828 Application 11/759, 126 Technology Center 3600 Before JENNIFER D. BAHR, LEE L. STEPINA, and AMANDA F. WIEKER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Timothy Edward Lagrange et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1, 3---6, 8, 10, and 17-22, which are the only claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. Appeal2014-004828 Application 11/759, 126 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1 1. An apparatus for use with a perforating device for perforating a wellbore, the perforating device including a charge tube, a carrier tube having an interior bore in which the charge tube is disposed, a detonator cord having a circular cross-sectional profile disposed in the charge tube, at least one shaped charge affixed to the charge tube, the at least one shaped charge having a radially outward pointing post in which a slot is formed [sic] the apparatus comprising: Amendment 1. a retention plate having a[ n] opening and a plurality of tabs projecting into the opening, the retention plate being configured to retain the detonator cord within the slot and having a medial curved bridge portion that conforms to the profile of the detonator cord, wherein the bridge portion is sized such that a major portion of the bridge portion is positioned radially inward of the radially outermost portion of the post.. REJECTIONS I. Claims 1, 3---6, 8, 10, and 21 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite. 1 Claim 1 in Appendix A (Claims on Appeal) of the Appeal Brief is an incorrect reproduction of claim 1 in this application. See Br. 17. Appellants state that "[a Jn amendment to claim 1 correcting a typographical error was not entered," seemingly acknowledging that the revisions indicated by underlining and bracketing in claim 1 in Appendix A have not been entered. Id. at 3. The last-entered amendment to the claims, including claim 1, is the Amendment filed December 22, 2011 (hereinafter "Amendment"). 2 Appeal2014-004828 Application 11/759, 126 IL Claims 1, 3, 4, 6, 10, 21, and 22 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Hancock (US 4,852,495, iss. Aug. 1, 1989). III. Claims 17-20 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Appellants' Admitted Prior Art (AAPA) and Hancock. DISCUSSION Rejection I-Indefiniteness The Examiner pointed out that claim 1, on the one hand, recites an apparatus for use with a perforating device (i.e., indicating an intended use of the apparatus but not positively reciting the perforating device and its components as part of the claimed apparatus), but claim 1 and its dependent claims, on the other hand, "later appear to recite the apparatus as interacting with and shaped based on these unclaimed components." Final Act. 2-3. Merely by way of example, the Examiner points out that claim 8, which depends from claim 1, "recites 'the retention plate seats substantially circumferentially around the post"' and queries whether "the post [is] part of the current invention." Ans. 6. Thus, as explained by the Examiner, "[i]t is not clear if [Appellants are] now attempting to claim the apparatus in combination with the perforating device and all that it includes, including the detonator cord having the specific shape, or if [Appellants are] still claiming the intended use of the device." Final Act. 3. The Examiner required "[c]larification." Id. 3 Appeal2014-004828 Application 11/759, 126 In response, citing Jn re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), and Manual of Patent Examining Procedure (MPEP) Â§ 2111 (I), 2 Appellants contend: Like the collar of In re Stencel, the detonator cord is recited in the preamble. Moreover, in exactly the same manner that the collar "limited the structure of the driver[,]" the detonator cord limits the structure of [the] retention plate. Thus, [Appellants] respectfully submit that the structure for the present pending independent claims are expressly sanctioned by prevailing case law and recognized as such by the U.S.P.T.O. Br. 8-9. Our reviewing court instructs: [W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of Â§ 112(b ). The satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). Once an examiner has rejected the claims based on a well-founded prima facie case of lack of clarity, "if the applicant does not adequately respond to that prima facie case," the rejection should be sustained "on the substantive basis of having failed to meet the requirements ofÂ§ 112[, second paragraph]." Id. at 1312. According to the Examiner, "[Appellants have] failed to clarify whether the claims are directed to the combination or to the intended use of 2 The language quoted by Appellants appears in MPEP Â§ 2111.02(1). 4 Appeal2014-004828 Application 11/759, 126 the apparatus." Ans. 2. "Since it is not clear what is included or excluded by the claim language, the claims are indefinite." Id. at 6. Here, the Examiner specifically identified a point of ambiguity in the claims-whether they are directed to an apparatus comprising the retention plate or to an apparatus comprising the combination of the perforating device (with its charge tube, carrier tube, detonator cord, and shaped charge) and the retention plate. Further, the Examiner explained why the claim was ambiguous. The recitation "for use with ... " in the preamble of claim 1 suggests that the perforating device is not part of the claimed invention while, on the other hand, subsequent limitations in the claims, such as the limitation in claim 1 that "a major portion of the bridge portion is positioned radially inward of the radially outermost portion of the post" and the limitation in claim 8 that "the retention plate seats substantially circumferentially around the post" suggest that the perforating device, or at least the post of the shaped charge, is part of the claimed invention (i.e., that the claims are directed to the combination of the retention plate and the perforating device). See Amendment 2, 3 (emphasis added). This was sufficient to shift to Appellants the burden to explain persuasively for the record why the language at issue is not actually unclear. Appellants have not satisfied this burden. Appellants contend that the detonator cord limits the structure of the retention plate. Be that as it may, this does not respond to the question of whether the claims are directed to an apparatus comprising the retention plate or to an apparatus comprising the combination of the perforating device (with its charge tube, carrier tube, detonator cord, and shaped charge) and the retention plate. The shape and/or dimensions of the retention plate may, for example, be defined in part by the 5 Appeal2014-004828 Application 11/759, 126 limitations of the detonator cord and the shaped charge of the perforating device, as well as the relationship between the detonator cord and the shaped charge set forth in the preamble, while the detonator cord and the shaped charge may not, themselves, be part of the claimed invention. Appellants have not answered the question asked by the Examiner-whether claim 1 requires only the retention plate or the combination of the retention plate with the charge tube, carrier tube, detonator cord, and shaped charge-much less explained why the claim language is clear in this regard. Thus, we sustain the rejection of claims 1, 3-6, 8, 10, and 21 under 35 U.S.C. Â§ 112, second paragraph, as indefinite.3 Rejection II-Anticipation Appellants argue that Hancock lacks "a medial curved bridge portion that conforms to the profile of the detonator cord," as called for in independent claim 1. Br. 10. According to Appellants, "the preamble phrase ['a detonator cord having a circular cross-sectional profile disposed in the charge tube'] structurally defines the shape and dimensions of the curved medial portion of the retention plate by using the size and shape of the detonator cord." Id. at 11. Appellants urge that "[p]ut plainly, the preamble phrase defines how the curved medial portion is shaped and not just how the curved medial portion is intended to be used." Id. The Examiner found that Hancock's push nut 13 is a retention plate as called for in claim 1. Final Act. 3. More specifically, the Examiner found that "Figure 2 shows that when the retention plate is placed on the post the 3 Claim 22 depends from claim 21, and, thus, like claim 21, incorporates the limitations of claim 1. Upon return of jurisdiction of this application to the Examiner, the Examiner may wish to consider whether claim 22 also is indefinite. 6 Appeal2014-004828 Application 11/759, 126 center area forms a curved bridge portion[] that has the shape of a detonator cord." Id. This finding is based in part on the Examiner's position that because "it is known for detonator cords to have various shapes and sizes, ... the limitation 'conforms to a shape of a detonator cord' does not limit the shape or size of the bridge portion." Id. The Examiner found that "Figure 2 shows that both the detonator cord ([push nut] 13) and the retainer are curved (i.e.[,] conforms to the profile) at the point of contact." Ans. 8. According to the Examiner, when Hancock's push nut 13 is seated on the posts (i.e., sides 29 of projection 25), the middle portion of the push nut "forms a curved bridge portion over [slot 27]," which "conforms to a profile of the circular cross-section detonator cord," and "it is this conformation that retains the detonating cord within the slot." Id. at 7. Appellants, on the other hand, contend that Hancock's Figure 2 "clearly shows the retainer means having a tangential point of contact on the detonator cord" and argue that "[ w ]hatever curvature that may arise has nothing to do with the cross-sectional profile of the detonator cord." Br. 12. Appellants add that Hancock "makes it clear that there is no relationship between how the 'push nut flexes' and the shape of the detonator cord." Id.; see Hancock, col. 2, 11. 63---68. We do not agree with the Examiner that the claim limitation "conforms to the profile of the detonator cord" does not limit the shape or size of the curved bridge portion. Claim 1 requires more than a curved bridge portion; claim 1 requires that the curved bridge portion conform to the profile of a detonator cord having a circular cross-sectional profile that fits within a slot formed in a post, and that the curved bridge portion be sized such that a major portion thereof fits within the diameter of the post. 7 Appeal2014-004828 Application 11/759, 126 The Examiner's finding that Hancock's retainer device 13 satisfies the "conforms to the profile of the detonator cord" limitation of claim 1 is premised on Hancock's disclosure that push nut 13 flexes, forming a curved portion that retains detonating cord 23 in the slot. Hancock discloses that when push nut 13 is pushed onto projection 25, its outer periphery "flexes towards the booster wall 31" and that "[t]his flexing forces the detonating cord 23 into intimate contact with the booster wall 31." Hancock, col. 2, 11. 63-67 (emphasis omitted). Hancock is silent as to whether push nut 13 contacts detonating cord 23 at more than two distinct points of tangency so as to conform to the profile of detonating cord 23, and the Examiner does not disagree with Appellants' contention that Hancock's Figure 2 "clearly shows the retainer means having a tangential point of contact on the detonator cord." Br. 12. In essence, the Examiner finds that the push nut flexing and retaining the detonating cord constitutes conforming to the profile of the detonating cord without establishing the requisite factual basis to support that finding. For the above reasons, the Examiner fails to establish by a preponderance of the evidence that Hancock anticipates the subject matter of independent claim 1. Accordingly, we do not sustain the rejection of claim 1 or claims 3, 4, 6, 10, 21, and 22, which depend directly or indirectly from claim 1, under 35 U.S.C. Â§ 102(b) as anticipated by Hancock. Rejection III-Obviousness The Examiner's rejection of claims 17-20, which also require a retention member including "a medial curved bridge portion that conforms to the profile of the detonator cord," under 35 U.S.C. Â§ 103(a) as unpatentable over AAP A and Hancock suffers from the same deficiency as 8 Appeal2014-004828 Application 11/759, 126 the rejection of claims 1, 3, 4, 6, 10, 21, and 22 under 35 U.S.C. Â§ 102(b). See Amendment 3--4; Final Act. 5---6. Accordingly, for the same reasons, we do not sustain the rejection of claims 17-20 under 35 U.S.C. Â§ 103(a) as unpatentable over AAP A and Hancock. DECISION The Examiner's decision rejecting claims 1, 3-6, 8, 10, and 21 stand rejected under 35 U.S.C. Â§ 112, second paragraph, is AFFIRMED. The Examiner's decision rejecting claims 1, 3, 4, 6, 8, 10, 21, and 22 under 35 U.S.C. Â§ 102(b) as anticipated by Hancock is REVERSED. The Examiner's decision rejecting claims 17-20 under 35 U.S.C. Â§ 103(a) as unpatentable over Appellants' Admitted Prior Art (AAPA) and Hancock is REVERSED. 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 9