Ex Parte Watson et al

Patent Trial and Appeal BoardSep 9, 2014

10711631 (P.T.A.B. Sep. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte ARTHUR I. WATSON, STEVEN DORNAK, MICHAEL W. MILLER, PARVEEN SAYELA, CODY CASEY, GREGORY H. MANKE, MARK MCCORRY, JOHN D. ROWATT, MARK E. ALLEN, and DIEGO A. NARVAEZ, ________________ Appeal 2014-002463 Application 10/711,631 Technology Center 3600 ________________ Before: MICHAEL L. HOELTER, LYNNE H. BROWNE and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a rejection of claims 1, 3‒10, 13‒20, and 22‒25. App. Br. 2. Claims 2, 11, 12, 21, 26‒38, and 41‒56 have been canceled while claims 39 and 40 have been allowed. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2014-002463 Application 10/711,631 2 THE CLAIMED SUBJECT MATTER The disclosed subject matter relates to “a system and methodology for utilizing an integrated motive unit in a submersible pumping system. The motive unit comprises a submersible motor section and protector section combined as a single device.” Spec. para. 4. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A system for producing oil, comprising: a submersible pump; and a motive unit to power the submersible pump, the motive unit being a single device with a motor section and motor protector section to seal the motor section from surrounding fluid and to accommodate thermal expansion of an intimal lubricating fluid during production of oil, the motive unit comprising a plurality of bearings, the motor section comprising a motor section shaft and the motor protector section comprising a motor protector section shaft, at least one of the motor section shaft and the motor protector section shaft extending longitudinally from an outer housing so the motor section shaft and the motor protector section shaft become axially affixed to each other with respect to a longitudinal axis of the motive unit to form a joint which is axially locked against separation that would otherwise occur due to the weight of the motor section, wherein the outer housing is longitudinally movable with respect to the joint such that after axially affixing the motor section shaft and the motor protector section shaft the outer housing is moved longitudinally to enclose the joint once the joint is axially locked. REFERENCES RELIED ON BY THE EXAMINER Vandevier US 4,521,708 June 4, 1985 Shaw US 4,667,737 May 26, 1987 Neuroth US 5,051,103 Sept. 24, 1991 Cairns US 5,645,438 July 8, 1997 Mack US 2002/0179305 A1 Dec. 5, 2002 Howell US 6,602,059 B1 Aug. 5, 2003 Musselwhite US 6,679,336 B2 Jan. 20, 2004 Appeal 2014-002463 Application 10/711,631 3 THE REJECTIONS ON APPEAL Claims 1, 3, 4, 7‒9, and 16‒18 are rejected under 35 U.S.C. § 102(b) as being anticipated by Mack. Final 2.1 Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Mack and Musselwhite. Final 5. Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Mack and Neuroth. Final 5. Claims 10, 15, 19, 22, 23, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mack and Shaw. Final 6. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Mack and Vandevier. Final 7. Claims 14 and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Mack and Howell. Final 7. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Mack and Cairns. Final 8. ANALYSIS The rejection of claims 1, 3, 4, 7‒9, and 16‒18 as being anticipated by Mack Independent system claim 1 includes a limitation directed to an outer housing being “longitudinally movable with respect to the joint” “after axially affixing” the two joining shafts together. Independent method claim 16 contains a similar limitation directed to moving a housing “longitudinally 1 The Examiner references the Office Action mailed May 16, 2013 as disclosing the grounds of rejection to be reviewed on appeal. Ans. 2. We refer to this Office Action as “Final.” Appeal 2014-002463 Application 10/711,631 4 . . . relative to the axially affixed connection.” As a consequence, dependent claims 3, 4, 7‒9, 17, and 18 also contain such a limitation. The Examiner finds that “this relative movement is visible between Figs. 3 and 4” of Mack. Final 3. Appellants contend that in Mack, “[t]here is no movement of an outer housing with respect to the joint after axially affixing the shaft sections” as claimed. App. Br. 6; see also App. Br. 8 and Reply Br. 6. Figure 3 of Mack illustrates items 22 and 24 prior to the axial interconnection of their respective shafts. Mack para. 13. Figure 4 of Mack illustrates items 22 and 24 “fully interconnected.” Mack para. 14. Figure 5 of Mack illustrates items 22 and 24 after they “have been separated.” Mack para 15. Paragraph 33 of Mack discusses the separation of items 22 and 24 which involve applying a load such that “shear pin 118 ruptures.” Throughout this interconnection and separation procedure, the Examiner does not indicate where Mack discloses that any outer housing moves with respect to the joint after the joint is made as claimed.2 2 We note an Advisory Action mailed June 27, 2013 where the Examiner references Mack’s “spring 96” and that a housing “could be moved upwardly (expanding spring 96), and then moved downwardly again (compressing spring 96), all while the axially affixed connection remains intact.” See also App. Br. 6 where Appellants address this matter. The Examiner did not employ such analysis in either the Final office action or in the Examiner’s Answer. We understand Mack as teaching that for any housing to move as indicated, the relative shaft sections would move as well, and to separately move the shafts after the joint is made requires a rupture of shear pin 188 which disconnects the joint so that the shafts can then be separated. See Mack para. 33. We do not agree with the Examiner that Mack’s “spring 96” anticipates the limitation of moving the outer housing “with respect to the joint” since to do so requires a breaking of the joint. Appeal 2014-002463 Application 10/711,631 5 Instead, with respect to claim 1, the Examiner finds that “[w]hether the housing moves after the joint is locked together is irrelevant, since claim 1 is a product claim” indicating that the limitation in question is a “product- by-process” limitation. Ans. 3. This is because “Mack discloses a joint ‘axially locked against separation’, which is all that is required by claim 1.” Ans. 3. Appellants disagree contending that claim 1 recites structural limitations with respect to “an outer housing which is longitudinally movable with respect to the joint.” Reply Br. 6. Appellants contend that “[t]he claim should not be labeled as a product-by-process claim in an effort to omit structural limitations specifically set forth in the subject claim.” Reply Br. 7. The pertinent limitation in claim 1 reads “wherein the outer housing is longitudinally movable with respect to the joint such that after axially affixing the motor section shaft and the motor protector section shaft the outer housing is moved longitudinally to enclose the joint once the joint is axially locked.” We agree with Appellants that this limitation contains structural limitations and that such limitations should not be disregarded by the Examiner by stating that “[h]ow the joint actually becomes locked is given little patentable weight.” Ans. 3. As the Examiner does not indicate how Mack’s outer housing is longitudinally moveable with respect to the joint after the shafts become axially affixed, we reverse the Examiner’s anticipation rejection of claims 1, 3, 4, and 7‒9. Regarding method claim 16, the Examiner again relies on a comparison of Mack Figures 3 and 4 for teaching the claimed longitudinal movement. Final 4. Here, the Examiner references Mack Figure 3 as showing a joint that “is already axially affixed.” Ans. 3. Appellants Appeal 2014-002463 Application 10/711,631 6 contend that “the Mack et al. device is not already axially affixed in the Fig. 3 position.” Reply Br. 7; see also id. at 8. Mack’s description of Figure 3 is consistent with Appellants’ understanding in that Figure 3 illustrates “the adjacent shaft sections being moved toward interconnection with one another” and hence are not yet “axially affixed” as claimed. Mack para. 13. In interpreting the claim term “axially affixed,” the Examiner appears to focus on the “axially” component without explaining how the shaft ends, which have yet to be mated together, are nevertheless “affixed” (e.g., claim 16 “merely discusses an ‘axially’ affixed connection,” Ans. 4). See also Reply Br. 8. In view of the above, we do not sustain the Examiner’s anticipation rejection of claims 16‒18. The remaining claims, i.e., claims 5, 6, 10, 13‒15, 19, 20, and 22‒25 are each rejected under 35 U.S.C. § 103(a) as being obvious over Mack and additionally referenced art. Final 5‒8. However, the Examiner does not rely on this additionally referenced art to cure the defect of Mack discussed above. Accordingly, as each of these claims depend directly from either claim 1 or claim 16, we likewise do not sustain their rejection as being unpatentable over Mack along with the respectively cited art. DECISION The Examiner’s rejections of claims 1, 3‒10, 13‒20, and 22‒25 are reversed. REVERSED Klh