Ex Parte McCalvin

Patent Trial and Appeal BoardNov 28, 2012

11635307 (P.T.A.B. Nov. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID E. MCCALVIN ____________________ Appeal 2010-010695 Application 11/635,307 Technology Center 3600 ____________________ Before: PHILLIP J. KAUFFMAN, BRADFORD E. KILE, and SCOTT E. KAMHOLZ, Administrative Patent Judges. KAMHOLZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010695 Application 11/635,307 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from the decision of the Examiner to reject claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE CLAIMED SUBJECT MATTER The claimed subject matter is directed to a well valve that has integrated sensors, and systems and methods incorporating such valves. Spec., para. [001]; Claims App’x. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A valve, comprising: a tubular valve housing having a central passageway; a valve seat located in the central passageway to define a first portion of the central passageway above the valve seat and second portion of the central passageway below the valve seat; a valve element to control flow through the valve seat; an indexing mechanism to regulate transition of the valve to an open state in which the valve element allows fluid communication through the valve seat or a closed state in which the valve element prevents fluid communication through the valve seat; and a sensor fixed to the housing to measure an attribute indicative of a state of the indexing mechanism. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tubel Patel Shirk US 5,975,204 US 6,662,877 B2 GB 2 330 598 A Nov. 2, 1999 Dec. 16, 2003 Apr. 28, 1999 Appeal 2010-010695 Application 11/635,307 3 REJECTIONS Appellant seeks our review of the following rejections: Claims 1-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Patel and Shirk. Ans. 3. Claims 1-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Patel and Tubel. Ans. 4. ANALYSIS Appellant argues claims 1-9 as a group; claims 10-16 as a group; and claims 17-22 as a group. We therefore select claims 1, 10, and 17 as representative of their respective groups and decide the appeal with respect to each group on the basis of the selected claims. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). 1. Obviousness over Patel and Shirk a. Claim 1 The Examiner found that Patel discloses all limitations of claim 1 except “a sensor fixed to the housing to measure an attribute indicative of a state of the indexing mechanism,” that Shirk discloses the use of sensors to measure a variety of properties indicative of valve state, and concluded that it would have been obvious to “to add [Shirk’s] sensors to the valve of Patel” as an application of “a known technique” to “improve similar devices.” Ans. 3-4. Appellant argues in response that (a) the claim requires that it is the index mechanism, not the valve, that the sensor measures; (b) that Shirk is not designed for operation from the surface of a well; (c) that the claimed invention can be reached from the prior art only by exercise of impermissible hindsight because the Examiner “fails to set forth any Appeal 2010-010695 Application 11/635,307 4 plausible reason to explain why the skilled artisan in possession of Patel and Shirk would have derived the limitations of the claimed invention”; (d) Shirk does not disclose an indexing system; (e) the “inventive concept” of the present application relates to problems encountered by an operator at the surface of the well, such as “los[ing] count of the number of mechanical or pressurization cycles”; and (f) the “hypothetical combination” of Patent and Shirk would have produced no more than Patel’s assembly with a sensor to indicate a valve state, not a state of Patel’s indexing mechanism. App. Br. 11-13. In response, the Examiner takes the position that Shirk discloses the desirability of monitoring various properties indicative of downhole valves, and that Patel’s indexing mechanism is one such property known in the prior art, so “it would be similarly advantageous to monitor other portions of the valve of Shirk et al. which are indicative of operational aspects of the valve.” Ans. 6-7. In reply, Appellant argues that (g) “neither Shark nor Patel discloses a sensor to monitor an indexing system” and reiterates the other arguments. Reply Br. 1-3. Appellant’s arguments do not apprise us of error in the rejection because arguments (a), (c), (d), (f), and (g), as listed above, are non- responsive to the rejection as articulated by the Examiner, and arguments (b) and (e) are not commensurate in scope with claim 1. With regard to arguments (a), (c), and (f), the Examiner’s “Response to Argument” section of the Answer remedies deficiencies Appellant identifies. See Ans. 6-7. With regard to arguments (b) and (e), nothing in claim 1 specifies that any aspect of the sensor’s operation or output is Appeal 2010-010695 Application 11/635,307 5 accessible to a user at the surface of the well. With regard to argument (d), the Examiner did not rely on Shirk for disclosure of an indexing mechanism. Appellant’s argument (g) does not address the combination as articulated by the Examiner, who acknowledged that neither reference discloses a sensor that monitors an indexing mechanism but provided articulated reasoning with rational underpinning to explain why it would have been obvious to modify Patel in the manner indicated. For these reasons, Appellant has not identified error in the Examiner’s decision to reject claims 1-9. b. Claim 10 Appellant’s arguments concerning claim 10 are analogous to various arguments made with respect to claim 1. App. Br. 13-14. We affirm the rejection of claims 10-16 for reasons similar to those given above. c. Claim 17 Appellant refers to arguments “set forth above” and does not give any arguments specific to claim 17. App. Br. 14-15. We affirm the rejection of claims 17-22 for reasons similar to those given above. d. Claim 23 Appellant’s “independent reasons” for patentability of claim 23 over claim 1 do not amount to arguments for separate patentability of claim 23 because they are not directed to any limitations set forth in claim 23. See App. Br. 15. Appellant consequently does not apprise us of error in the rejection of claims 23 for reasons similar to those given above. e. Claim 24 Appellant’s “independent reasons” for patentability of claim 24 over claim 1 do not amount to arguments for separate patentability of claim 24 Appeal 2010-010695 Application 11/635,307 6 because they are not directed to any limitations set forth in claim 24. See App. Br. 16. Appellant consequently does not apprise us of error in the rejection of claim 24 for reasons similar to those given above. 2. Obviousness over Patel and Tubel Appellant’s arguments concerning the obviousness rejection over Patel and Tubel are essentially parallel to those given with respect to the obviousness rejection over Patel and Shirk. App. Br. 16-19; Reply Br. 3. We affirm the rejection of claims 1, 10, 17, 23, and 24 for obviousness over Patel and Tubel for reasons similar to those given above with respect to the obviousness rejection over Patel and Shirk. DECISION For the above reasons, the Examiner’s decision to reject claims 1-24 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 hh