Ex Parte Mahoney et al

Patent Trial and Appeal BoardNov 27, 2012

11137285 (P.T.A.B. Nov. 27, 2012)

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. 11/137,285 05/25/2005 Mark William Mahoney 2250.08113 6695 21000 7590 11/27/2012 DECKER, JONES, MCMACKIN, MCCLANE, HALL & BATES, P.C. BURNETT PLAZA 2000 801 CHERRY STREET, UNIT #46 FORT WORTH, TX 76102-6836 EXAMINER PATEL, VISHAL A ART UNIT PAPER NUMBER 3674 MAIL DATE DELIVERY MODE 11/27/2012 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 MARK WILLIAM MAHONEY, IAN DOUGLAS RIMMER, and BENNY J. WILLIAMS ____________________ Appeal 2010-005906 Application 11/137,285 Technology Center 3600 ____________________ Before: WILLIAM V. SAINDON, LYNNE H. BROWNE, and BARRY L. GROSSMAN, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005906 Application 11/137,285 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-4, 6-10, and 12, 13, and 15-17. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method of providing a seal around a polished rod, comprising the steps of: a) providing the polished rod so that the polished rod is driven at one end in a reciprocating manner and the other end being coupled to a pump located downhole in a well; b) providing a stuffing box, which stuffing box has a closed chamber having first and second openings therethrough for receiving the polished rod, the chamber having a variable volume; c) providing packing in the stuffing box chamber, the packing being malleable and injectable; d) maintaining the packing in the chamber under pressure so that as the amount of packing in the chamber decreases during reciprocation of the polished rod, the chamber decreases in volume. Rejections I. Claims 1, 3, 4, 9, 16, and 17 are rejected under 35 U.S.C. § 102(b) as anticipated by Anathor-Henriksen (US 1,324,775, iss. Dec. 16, 1919). II. Claims 2, 6-8, 10, 12, 13, and 15 are rejected under § 103(a) as unpatentable over Anathor-Henriksen and Magos (US 3,199,876, iss. Aug. 10, 1965). Appeal 2010-005906 Application 11/137,285 3 SUMMARY OF DECISION We REVERSE. OPINION Claims 1 and 12 are independent and require a method of sealing with a step of “providing [a] polished rod so that the polished rod is driven at one end … and the other end being coupled to a pump located downhole in a well.” The Examiner interprets the clause, “coupled to a pump located downhole in a well,” to be intended use (Ans. 3, 6), and finds that the polished rod of Anathor-Henriksen is capable of performing the intended use (Ans. 6). Appellants correctly point out that Anathor-Henriksen does not disclose a pump. App. Br. 7, 15. The issue raised, therefore, is whether independent claims 1 and 12 require a pump. We determine that they do. The claims recite a step of “providing” a particular structure. That particular structure includes a rod connected to a pump. Accordingly, the Examiner’s rejections of the independent claims (and, necessarily, the claims that depend therefrom) read out the pump limitation and cannot be sustained. In the event of further prosecution, we note that the Examiner has provided prima facie support for the notion that a known solution to the problems involved in packing a moving rod is to place the packing under pressure and to either reduce the volume of the cylinder holding the packing (see Anathor-Henriksen) or to have a source of additional packing under pressure to be injected into the cylinder (see Magos). See KSR Int'l Co. v. Appeal 2010-005906 Application 11/137,285 4 Teleflex Inc., 550 U.S. 398 (2007) (“if 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 her skill”). In addition, using malleable and injectable packing is commonplace in the art. Spec. 4 (“Stuffing boxes can be provided with an injectable packing, such as is taught by Cox”), Spec. 15 (discussing Cox, and further noting that “the specific injectable packing used is a commercially available product”); see In re Leshin, 277 F.2d 197, 199 (CCPA 1960) (the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art). We decline to exercise our authority under 37 C.F.R. § 41.50(b) because of the insufficiency of the record before us with respect to the pump limitation identified above. Our decision not to exercise our authority under § 41.50(b) shall not be taken as an indication that the claims are patentable over Anathor-Henriksen, Magos, and admitted and/or other prior art. DECISION We REVERSE the Examiner’s decision regarding claims 1-4, 6-10, and 12, 13, and 15-17. REVERSED Klh