Ex Parte Wilie

Patent Trial and Appeal Board

Aug 23, 2017

13881641 (P.T.A.B. Aug. 23, 2017)

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.
13/881,641 04/25/2013 Curtis Len Wilie TH4116-US-PCT 8320
23632 7590 08/25/2017
SHF! T OH miUPANY
EXAMINER
P O BOX 576 WOOD, DOUGLAS S
HOUSTON, TX 77001-0576
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
USPatents@Shell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CURTIS LEN WILIE
Appeal 2016-000214
Application 13/881,641
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 15—19.3 We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“Br.,” filed Apr. 10,
2015), the Examiner’s Answer (“Ans.,” mailed Aug. 12, 2015) and the Final
Office Action (“Final Act.,” mailed Sept. 15, 2014).
2 Appellant identifies Shell Oil Company as the real party in interest (Br. 2).
3 Claims 1—14 are withdrawn from consideration and claims 20—22 have
been canceled.
Appeal 2016-000214
Application 13/881,641
THE INVENTION
Appellant’s claimed invention relates to separating a tubular element,
particularly when the tubular element is suspended above a subsea well
experiencing an undesired flow of produced fluids. (Spec. 1, lines 6—8).
Claim 15, reproduced below with line breaks and indentation added for
clarity, is illustrative of the subject matter on appeal.
15. A well emergency separation tool for separating a tubular
element, comprising:
a tubular element having an inner and an outer surface, a
circumference of said outer surface, and a first end and a second
end;
an explosive material, said explosive material radially
surrounding said tubular element;
a first ram body,
said first ram body comprising an outer surface and an
inner surface,
said outer surface and said inner surface connected by a
substantially flat face,
wherein said flat face comprises an arcuate recess
designed to engage a portion of said circumference of
said tubular element,
wherein at least a portion of said explosive material is
contained with said first ram body,
wherein said inner surface contains a void that surrounds
the portion of said explosive material; and
a trigger adapted to send an activation signal to said explosive
material.
THE REJECTIONS
The Examiner relies on the following as evidence of unpatentability:
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Application 13/881,641
Pierce US 4,323,117 Apr. 6, 1982
Barrington US 5,133,419 July 28, 1992
Olson US 6,089,526 July 18,2000
1. Claims 15—18 are rejected under 35 U.S.C. § 103 as being
unpatentable over Pierce and Olson.
2. Claim 19 is rejected under 35 U.S.C. § 103 as being unpatentable over
Pierce, Olson, and Barrington.
ANALYSIS
Independent claim 15
The Examiner’s position is that Pierce discloses all of the limitations
of claim 15 except that “said inner surface contains a void that surrounds the
portion of said explosive material,” which the Examiner finds in Olson
(Final Act. 2—3). According to the Examiner, it would have been obvious
“to have included the ram body disclosed by Olson in the invention
disclosed by Pierce in order to allow a ram body to seal around a drill string
or other tubular element contained within a first tubular element following
an explosive shearing of the first tubular element” {id. at 3).
Appellant does not dispute the Examiner’s findings as to any of the
limitations of independent claim 15. The sole argument challenging the
obviousness rejection is that the Examiner’s proposed modification of Pierce
is improper “because Pierce does not teach the desirability of allowing a ram
body to seal around a drill string, such a modification would render [Pierce]
unsatisfactory for its intended purpose, and such a modification would
change the principle of operation of [Pierce]” (Br. 5). According to
Appellant, “Pierce is specifically directed to an invention that provides ‘for
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Appeal 2016-000214
Application 13/881,641
emergency action to shear a well casing together with internal piping or
tubing’” (Br. 4) (citing Pierce, abstract).
The Examiner responds that Pierce discloses at column 2, lines 21—25,
“that the rams may be configured to seal about internal piping of the casing”
(Ans. 3).
To the extent that Appellant maintains that an explicit suggestion in
the prior art is required to support the obviousness rejection, that argument is
foreclosed by KSR, in which the Supreme Court rejected the rigid
application of a “teaching, suggestion, and motivation” test for
nonobviousness. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007)
(“The obviousness analysis cannot be confined by a formalistic conception
of the words teaching, suggestion, and motivation, or by overemphasis on
the importance of published articles and the explicit content of issued
patents”). Thus, Appellant’s argument that Pierce does not disclose a
motivation to modify its apparatus precisely as the Examiner proposed does
not apprise us of error in the rejection.
Appellant’s arguments that the modification would render the
apparatus of Pierce unsatisfactory for its intended purpose or change its
principle of operation are also without merit. These arguments are
predicated on the assumption that the features of shearing and sealing are
mutually exclusive. Appellant’s assumption is not supported by any record
evidence. On the contrary, Pierce discloses:
[Sjevering of the casing is preferably accomplished or aided by
use of shaped charges disposed in the housing to ring the casing
and which upon ignition cut the casing without deforming it
and enable hydraulically actuated shear rams to complete the
procedure by shearing any remaining material in the casing and
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Appeal 2016-000214
Application 13/881,641
internally disposed pipe or tubing and move into tight facing
contact to seal the casing.
(Pierce, col. 1,1. 63 — col. 2,1. 3) (emphasis added). It is evident from this
disclosure in Pierce that shearing and sealing are not mutually exclusive, and
that the shear rams disclosed in Pierce may also be configured for sealing,
consistent with the Examiner’s proposed modification.
Accordingly, Appellant’s arguments do not apprise us of error in the
rejection. Thus, we sustain the rejection of independent claim 15.
Dependent claims 16—19
Appellant does not present any separate substantive patentability
arguments regarding dependent claims 16—19. Instead, Appellant points out
that these claims are allowable based on their dependency from the
independent claims. Br. 5. Accordingly, we sustain the rejection of
dependent claims 16—19 for the same reasons.
DECISION
The rejection of claims 15—19 under 35 U.S.C. § 103 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).
AFFIRMED
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