Ex Parte Ward

Patent Trial and Appeal Board

Apr 26, 2016

12668882 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/668,882 01112/2010 Scott D. Ward
64833 7590 04/26/2016
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
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.
OTD-031082US
(CMRN:0034)
CONFIRMATION NO.
9424
EXAMINER
LEMBO, AARON LLOYD
ART UNIT PAPER NUMBER
3678
MAILDATE DELIVERY MODE
04/26/2016 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
Exparte SCOTT D. WARD
Appeal2014-004502
Application 12/668,882
Technology Center 3600
Before JOHN C. KERINS, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-9, 13, 14, 16-19, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellant submits the real party in interest is Cameron International
Corporation. Appeal Br. 2.
Appeal2014-004502
Application 12/668,882
THE CLAIMED SUBJECT MATTER
Independent claims 1, 6, and 16, reproduced below, are illustrative of
the claimed subject matter.
1. A system, comprising:
a two-part funnel configured to guide a first component
through a passage extending through the two-part funnel and
into position with respect to a second component of a mineral
extraction system, comprising:
a hollow funnel base having a first axis; and
a hollow funnel extension having a second axis, wherein
the hollow funnel base and the hollow funnel extension are
coupled by a joint, the hollow funnel extension is configured to
be disposed in at least a first position and a second position
relative to the position of the hollow funnel base, the first and
second axes are coaxial in the first position, and the first and
second axes are offset or at an angle relative to one another in
the second position.
6. A system, comprising:
a hollow funnel extension configured to couple to a
hollow funnel base of a mineral extraction system with a joint,
wherein the hollow funnel extension is configured to be
disposed in at least a first position and a second position
relative to the hollow funnel base, the hollow funnel extension
has a first axis, the hollow funnel base has a second axis, the
first and second axis are coaxial in the first position, the first
and second axes are offset or at an angle relative to one another
in the second position, and the hollow funnel extension is
configured to guide a first component into position with respect
to a second component in the first position through a passage
extending through the hollow funnel extension and the hollow
funnel base.
16. A system, comprising:
a subsea funnel configured to guide a first component
into position with respect to a second component through a
passage extending through the subsea funnel, the subsea funnel
comprising a hollow funnel base, a hollow funnel extension,
and hinge, wherein the hinge couples the hollow funnel base to
2
Appeal2014-004502
Application 12/668,882
the hollow funnel extension, the hollow funnel base has a first
axis, the hollow funnel extension has a second axis, the first and
second axes are coaxial in a first position of the hollow funnel
extension, and the first and second axes are offset or at an angle
relative to one another in a second position of the hollow funnel
extension.
REJECTIONS
Claims 1-9, 13, 14, 16-19, 21, and 222 are rejected under 35 U.S.C. §102(b)
as anticipated by Goforth (US 5,817 ,066, iss. Oct. 6, 1998). 3 Final Act. 3.
DISCUSSION
Anticipation-Claims 1-4, 6-9, 13, 14, 16-18, 21, and 22
The Examiner found that Goforth discloses all of the limitations of
claims 1--4, 6-9, 13, 14, 16-18, 21, and 22. Final Act. 3-9. Goforth
discloses an irrigation syringe used for feeding a patient. Goforth, col. 1, 11.
9-10. Appellant contends the Examiner erred in several respects.
Appellant repeatedly argues that the Examiner's reliance on Goforth
is erroneous because it "is not directed towards a funnel or any other type of
system used for a mineral extraction system, e.g., a subsea funnel" and "one
of ordinary skill in the art would not consider" Goforth as disclosing a
mineral extraction system. Appeal Br. 6; 8; 9-10; Reply Br. 2. To the
extent Appellant contends Goforth is non-analogous art, the argument is not
persuasive. An argument that a reference is non-analogous art is "not
2 Claims 10 and 11 are objected to as being dependent upon a rejected base
claim. The Examiner indicates these claims would contain allowable subject
matter if rewritten in independent form including all of the limitations of the
base claim and any intervening claims. Final Act. 9.
3 A rejection of claims 21 and 22 under 35 U.S.C. § 112, second paragraph,
has been withdrawn on appeal. Ans. 8.
3
Appeal2014-004502
Application 12/668,882
'germane' to a rejection under section 102." In re Self, 671F.2d1344, 1351
(CCPA 1982). To the extent Appellant contends the phrase "mineral
extraction system" in claims 1 and 6 and the word "subsea" used to modify
"funnel" in claim 16 are structural limitations, the argument is likewise not
persuasive. The Examiner explained that:
"mineral extraction system" does not constitute anything more
than a system which at some point must extract minerals. In
this case, material to be fed to patients contains minerals and
those minerals are at some point drawn up into the bulb from
some reservoir. Secondly, the term "subsea" is a term directed
toward the intended use ... [but does not] positively require that
the funnel system be used as part of a hydrocarbon recovery
system or subsea wellhead.
Ans. 9. We agree with the Examiner that the phrase "mineral extraction
system" and the word "subsea" do not recite structural limitations sufficient
to distinguish the claims from the structure disclosed by Goforth. See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)("It is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable.")
Appellant next argues, with respect to claim 1, that Goforth does not
disclose "a two-part funnel configured to guide a first component through a
passage extending through the two-part funnel and into position with respect
to a second component of a mineral extraction system." Appeal Br. 6.
Appellant makes the same argument with respect to the "hollow funnel
extension" recited in claim 6, and the "subsea funnel" recited in claim 16.
Id. at 8, 10. Appellant argues that Goforth's bulb 1
blocks any component from passing through the lid 3 and
entering the syringe barrel 12 ... [and] it cannot be reasonably
said that the lid 3 and the syringe barrel 12 are configured to
guide a first component into position with respect to a second
4
Appeal2014-004502
Application 12/668,882
component through a passage extending through the lid 3 and the
syringe barrel 12.
Id. at 7. This argument, as explained below, is based on an erroneous
interpretation of the Examiner's rejection.
The Examiner found that Goforth' s funnel headed portion 10
(Goforth, col. 4, 1. 53) is the recited "funnel base having a first axis" and
Goforth's lid 3 is the recited "funnel extension having a second axis." Final
Act. 3--4. The Examiner found that Goforth discloses a hinge between
funnel headed portion 10 and lid 3. Id. at 4--5. In the position shown in
Goforth's Figure 5A, the axis of funnel headed portion 10 and the axis of lid
3 are aligned coaxially as recited in the claims, and in Figure 5B, the axes
are offset as recited in the claims. Id. at 4; see Goforth Fig. 5A and Fig. 5b.
The Examiner found that Goforth' s bulb 1 is the recited first
component and the syringe barrel 12 is the recited second component. Id. at
3--4; see Goforth, Fig. 3. Figures 2 and 4 of Goforth disclose that lid 3 and
funnel headed portion 10 form a passage and bulb 1 is guided through the
passage into position in syringe barrel 12 when lid 3 is moved from the open
position shown in Figure 5b to the closed position shown in Figure 5A.
Goforth, Figs. 2, 4, 5A, and 5B. Thus, the Examiner's finding that Goforth
discloses all the structural limitations of claims 1, 6, and 16 is supported by
the requisite preponderance of the evidence. See In re Caveney, 7 61 F .2d
671, 674 (Fed. Cir. 1985) (preponderance of the evidence is the standard that
must be met by the PTO in making rejections.). Appellant's argument that
bulb 1 blocks a first component from being guided through the claimed
passage is not persuasive because the Examiner found bulb 1 is the recited
first component.
5
Appeal2014-004502
Application 12/668,882
Appellant also argues that bulb 1 is not guided through the passage
because it is connected to lid 3. Appeal Br. 7. The Examiner responds that
whether the bulb and lid are connected does not affect whether the bulb is
guided through the passage. Ans. 10. As explained in the Final Action, bulb
1 is guided through the passage when lid 3 moves from the open to the
closed position. Appellant's argument is, thus, not persuasive.
With respect to dependent claims 3, 4, 7-9, 13, 14, 17, 18, 21, and 22,
Appellant does not argue separately for the patentability of any of these
claims. See Appeal Br. 6-12. With respect to claim 22, Appellant interposes
essentially the same argument as for claims 1, 6, and 16 that "Goforth does
not teach a subsea funnel configured to guide the first component to engage
or connect with the second component of a mineral extraction system, as
recited by claim 22." Id. at 11. The Examiner responds that the term
"subsea" does not limit the scope of the claims and that bulb 1 is engaged or
connected with syringe barrel 12 through funnel headed portion 10 and lid 3.
Ans. 12. As we explained above, neither the word "subsea" nor the phrase
"mineral extraction system" structurally distinguish over Goforth. We agree
with the Examiner's finding that bulb 1 is "engaged or connected" with
syringe barrel 12 as claimed and, therefore, sustain the rejection of claim 22.
We sustain the Examiner's rejection under 35 U.S.C. § 102(b) of
independent claims 1, 6, and 16, as well as of claims 3, 4, 7-9, 13, 14, 17,
18, 21, and 22 which depend thereon.
Anticipation-Claims 5 and 19
Claims 5 and 19 are dependent upon claim 1 and claim 16,
respectively. These claims recite further structural limitations that require
coupling the two part funnel to "the mineral extraction system" (claim 5),
6
Appeal2014-004502
Application 12/668,882
and the subsea funnel to "at least one component of a mineral extraction
system" (claim 19). Appeal Br., Claims App. Both claims recite the
components of the mineral extraction system as comprising "a well, a
wellhead, a subsea tree, a mineral deposit, a tool, a tool connector, a valve, a
controller conduit or a combination thereof." Id.
The Examiner asserts that Goforth discloses these claim limitations
because it "is considered a tool used to deposit minerals." Final Act. 6, 8
(emphasis added). Appellant argues that Goforth does not teach coupling to
the mineral extraction system recited in claims 5 and 19. Appeal Br. 8, 11.
Based on our review of Goforth, the Examiner has not adequately
established that Goforth discloses any coupling to a mineral extraction
system, given the particular components recited as being included in the
claimed mineral extraction system. Thus, the Examiner's rejection of claims
5 and 19 is not supported by a preponderance of the evidence and is not
sustained.
DECISION
The Examiner's decision rejecting claims 1--4, 6-9, 13, 14, 16-18, 21,
and 22 is AFFIRMED. The Examiner's decision rejecting claims 5 and 19
is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
7