SHELL OIL COMPANY

Patent Trials and Appeals BoardNov 3, 2020

2019005984 (P.T.A.B. Nov. 3, 2020)

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. 14/774,559 09/10/2015 Derk Lucas KLOMPSMA TS9827-US-PCT 9096 23632 7590 11/03/2020 SHELL OIL COMPANY P O BOX 576 HOUSTON, TX 77001-0576 EXAMINER JARIWALA, CHIRAG ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 11/03/2020 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): Shelldocketing@cpaglobal.com USPatents@Shell.com shellusdocketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DERK LUCAS KLOMPSMA and LUBBERTUS LUGTMEIER Appeal 2019-005984 Application 14/774,559 Technology Center 3746 Before JENNIFER D. BAHR, JILL D. HILL, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5, 8–10, and 12. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Shell Oil Company. Appeal Br. 2. Appeal 2019-005984 Application 14/774,559 2 CLAIMED SUBJECT MATTER The application is titled “Device for Pumping Fluid from a Wellbore.” Spec. 1. Claims 1 and 12 are independent. Appeal Br. 8–10 (Claims App.). Claim 1, reproduced below and with emphasis added to two limitations central to our analysis, is illustrative of the claimed subject matter: 1. A pump device for pumping fluid from a wellbore, comprising: - a pump chamber having a volume expandable to receive a first fluid volume; - a piston member arranged in the pump chamber, the piston member axially moveable between a first piston position and a second piston position; - a fluid conduit adapted for connection to a surface pump for applying a selected fluid pressure increase in the fluid conduit to move the piston member from the first piston position to the second piston position; - a storage chamber having a volume expandable to receive the first fluid volume, the storage chamber having a reciprocating member, the reciprocating member moveable from a first member position to a second member position responsive to hydraulic pressure; - an inlet channel connecting the pump chamber to the storage chamber; - a first valve arranged in the inlet channel for allowing fluid flow from the pump chamber to the storage chamber when the piston member moves from the first piston position to the second piston position and for preventing fluid flow from the storage chamber to the pump chamber; - an outlet channel connecting the storage chamber to the fluid conduit; - a second valve arranged in the outlet channel for allowing fluid flow from the storage chamber to the fluid conduit when the piston member moves from the second piston position to the first piston position and for preventing fluid flow from the fluid conduit to the storage chamber; Appeal 2019-005984 Application 14/774,559 3 - a fluid inlet for fluid communication between the wellbore and the pump chamber; and - a third valve arranged in the fluid inlet for allowing fluid flow from the wellbore to the pump chamber when the piston member moves from the second piston position to the first piston position and for preventing outflow of fluid from the pump chamber to the wellbore. Appeal Br. 8 (Claims App., emphases added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Holland US 4,611,974 Sept. 16, 1986 Roe US 7,401,623 B2 July 22, 2008 Pardey US 8,272,457 B2 Sept. 25, 2012 Hansen US 2013/0251547 A1 Sept. 26, 2013 REJECTIONS (1) The Examiner rejects claims 1–5, 8, and 12 as unpatentable under 35 U.S.C. § 103(a) over Holland in view of Roe. Final Act. 2. (2) The Examiner rejects claim 9 as unpatentable under 35 U.S.C. § 103(a) over Holland in view of Roe and Hansen. Id. at 6. (3) The Examiner rejects claim 10 as unpatentable under 35 U.S.C. § 103(a) over Holland in view of Roe and Pardey. Id. at 7. OPINION I. Rejection of Claims 1–5, 8, and 12 The Examiner rejects claims 1–5, 8, and 12 as being unpatentable over Holland in view of Roe. Final Act. 2. Appeal 2019-005984 Application 14/774,559 4 a. Issues The primary issues before us are: (1) Whether Holland discloses the claimed “outlet channel connecting the pump chamber to the storage chamber;” and (2) Whether a skilled artisan would have modified Holland’s “outlet channel” to include the claimed “second valve” based on Roe’s teachings. b. Examiner’s Rejection In rejecting independent claim 1, the Examiner finds that Holland discloses the claimed limitations with the exception of the claimed “second valve.” See Final Act. 3–4. The Examiner references Holland’s Figure 1 in finding that Holland discloses the majority of the claimed features. See id. We reproduce Holland’s Figure 1, below: Appeal 2019-005984 Application 14/774,559 5 Figure 1 “is a diagram, in somewhat schematic form, of the hydraulically operated well pump system of [Holland’s] invention.” Holland, 5:56–58. The Examiner finds that Holland’s Figure 1 discloses, inter alia, pump device 10 comprising: Appeal 2019-005984 Application 14/774,559 6 (1) pump chamber 62 and piston member 52 arranged in pump chamber; (2) fluid conduit 24 adapted to connect to surface pump 115; (3) storage chamber 84 having volume 98 and reciprocating member 96 movable from a first member position (left) to a second member position (right); (4) inlet channel 72 connecting pump chamber 62 to storage chamber 98 and first valve 70 arranged in inlet channel 72; and (5) outlet channel (26, 38) “connecting the storage chamber (98) to the fluid conduit (24).” Final Act. 3 (citations omitted). The Examiner acknowledges that Holland does not explicitly disclose the claimed “second valve,” and relies on Roe for teaching “a double acting valve unit . . . arranged between the fluid reservoir (20) and pump (12) which can be fitted inside of the tubing or conduit.” Id. at 4 (citing Roe Fig. 1, 3:4–6). The Examiner proposes to modify Holland’s “outlet channel” (26, 38) “to incorporate a valve means as taught by Roe as a second valve in order to prevent overflow and maintain pressure in the pump device, as recognized by Roe” at column 3, lines 4–11. Id.; see also Ans. 5 (clarifying that the proposed modification is to Holland’s “outlet channel” (26, 38)). In the Answer, the Examiner further explains that “us[ing] the valve of Roe in the outlet channel (26+38) of Holland is to prevent the overflow and maintain the pressure in the pump device” (Ans. 5 (citing Roe, 3:4–11)) and that “it is necessary to maintain the overflow and the fluid pressure in the pump system for the purpose of preventing the possibility of cavitation” (id. at 6). Appeal 2019-005984 Application 14/774,559 7 In rejecting independent claim 12, the Examiner relies on the “modified pump device of Holland and R[oe]” for teaching “all the structural limitations as set forth in claim 12.” Final Act. 6. The Examiner acknowledges that this modified device of Holland and Roe “does not explicitly teach the method” of claim 12, but determines that because the modified device meets all the structural limitations of claim 12, it would necessarily perform the claimed method. Id. c. Appellant’s Arguments In contesting the rejection, Appellant presents two arguments that we find persuasive. First, Appellant argues that Holland’s “outlet channel” (26, 38) does not “connect[] the storage chamber to the fluid conduit.” Appeal Br. 6. Second, Appellant argues that Roe’s teaching of a valve would not lead a skilled artisan to arrive at the claimed “second valve.” See id. at 7 (“Holland and Roe does not teach, suggest, or motivate a person of ordinary skill in the art to arrive at the pump device of claim 1”); see also id. at 4 (“Even if the second valve was the only distinction over Holland, Applicant does not find teaching or suggestion in Roe’s valve between a fluid reservoir in a vehicle and a pump to overcome that deficiency in Holland.”). d. Analysis First, Appellant asserts that Holland does not disclose “an outlet channel connecting the storage chamber to the fluid conduit.” See Appeal Br. 6 (“Holland teaches to use separate fluid conduits”); see also id. (“there Appeal 2019-005984 Application 14/774,559 8 is nothing [in Holland] suggesting that conduit 24 and conduit 26 can be in fluid communication”). We agree with Appellant. We infer from Appellant’s argument that claim 1 should be interpreted to require that “connecting the storage chamber to the fluid conduit” requires the “outlet channel” to be in fluid communication with the “fluid conduit.” See Appeal Br. 6 (arguing that Holland’s “fluid conduit” 24 and Holland’s “outlet channel” 26 are not “in fluid communication”). The Examiner agrees with this interpretation. See Ans. 7 (finding that “outlet conduit” 26 is in fluid communication with “fluid conduit” 24 in explaining that “outlet conduit (26), through which wellbore fluid flows, is present within the fluid conduit (24)”). This interpretation is also consistent with the Specification. In particular, the Specification describes, With the device and the method of the invention it is achieved that the fluid conduit serves both for driving the device to perform the pump cycles, and for discharging fluid that is pumped out of the wellbore. The ability to use a single fluid conduit for these two functionalities obviates the need to install and operate separate fluid conduits for driving the downhole pump and for discharging the pumped fluid, as is the case in the prior art. Spec. 3:14–22 (emphasis added); see also id. at Fig. 2 (depicting fluid conduit 20 in fluid communication with storage chamber 52 via outlet channel 64). Turning to Holland, and applying the agreed-upon claim construction, the Examiner relies on Holland’s outer driving fluid conduit 24 for satisfying the claimed “fluid conduit” and Holland’s “inner production fluid conduit” 26 for satisfying the claimed “outlet channel.” See Final Act. 3 (finding Appeal 2019-005984 Application 14/774,559 9 Holland’s “outlet channel (26 + 38) connecting the storage chamber (98) to the fluid conduit (24)”). We agree with Appellant, however, that Holland’s “outlet channel” (26, 38) is not in fluid communication with Holland’s “fluid conduit” 24. See Appeal Br. 6. Notwithstanding the Examiner’s position to the contrary (see Ans. 7), Holland is clear in its disclosure that the driving fluid (present in Holland’s outer driving fluid conduit 24) is separate from the production fluid present in Holland’s inner production fluid conduit 26. See, e.g., Holland 5:18–21 (“The downhole pump advantageously utilizes a disposable hydraulic fluid which may be of higher density than the production fluid, such as water, and maintains the driving fluid isolated from the production fluid”) (emphasis added); see also, e.g., id. at 7:17–20 (“The first piston 50 is slidably disposed in the housing 42 and divides the housing into a production fluid transfer chamber 54 and a driving fluid transfer chamber 56”) (italicized emphasis added). Accordingly, Holland’s “outlet channel” (26, 38) is divided and isolated from Holland’s “fluid conduit” 24, and does not “connect” Holland’s “storage chamber” 98 to Holland’s “fluid conduit” 24 as required by the claims. For at least this reason, we do not sustain the Examiner’s rejection of claims 1 and 12. Moreover, we reverse the Examiner’s rejection of claims 1 and 12 because we are not persuaded that a skilled artisan would have added Roe’s valve to Holland’s “outlet channel” (26, 38) for the purpose of “maintain[ing Holland’s] overflow and fluid pressure in the pump system.” Ans. 6; see also Final Act. 6 (relying on “the modified device of Holland and R[oe]” for performing the method of claim 12). The Examiner’s proposed modification is not supported by the record. Appeal 2019-005984 Application 14/774,559 10 As an initial matter, and for clarity of record, we understand that pump cavitation occurs on the suction, or inlet, side of a pump. Because the Examiner proposes to locate Roe’s valve in Holland’s “outlet channel” (26, 38), which is located on the suction side of chamber 98, we also understand that the Examiner proposes to reduce cavitation that may occur within chamber 98 due to the pumping of production fluid (to delivery conduit 102) via reciprocation of piston 96. See Holland, Fig. 1. Even if pump cavitation was a problem that Roe’s valve could solve, however, Holland’s system already has structure that maintains pressure within chamber 98. Specifically, Holland provides for a “production fluid delivery conduit 102 . . . in communication with the chamber 98 and has a minimum pressure valve 104 interposed therein for maintaining a minimum pressure in chamber 98 in response to the reciprocation of the piston 96.” Holland, 8:37–41 (italicized emphasis added); see also id. at Fig. 1 (depicting pressure valve 104 connected to chamber 98). In addition to valve 104, Holland also discloses accumulator 106 for maintaining a minimum pressure within chamber 98. See id. at 8:45–47. (“The chambers 98 and 100 may be maintained at a predetermined minimum pressure by accumulators 106 and 108, respectively”); see also id. at Fig. 1 (depicting accumulator 106 connected to chamber 98 with unlabeled check valve interposed between the structures). Because Holland’s pump device 10 already has structure for maintaining the pressure within chamber 98, we are not persuaded that a skilled artisan would have added Roe’s valve within Holland’s “outlet channel” (26, 38) for achieving a similar purpose. Appeal 2019-005984 Application 14/774,559 11 As to the Examiner’s additional reasoning that the proposed modification would also “maintain overflow” (see Ans. 6), it is not clear to us what, exactly, overflow is being maintained. We presume that the overflow occurs with Holland’s production fluid, but the Examiner fails to explain where such overflow condition would occur for us to consider. See generally id.; see also generally Final Act. For these reasons, we do not sustain the rejection of independent claim 1 nor the rejection of dependent claims 2–4, and 8, which depend from claim 1 and whose rejection suffers from the same flawed analysis. See Final Act. 4–5. Further, the rejection of claim 12 relies on the structure resulting from the combination of Holland and Roe discussed above (id. at 6) and, thus, also suffers from the same flawed analysis. In sum, we do not sustain the rejection of claims 1–5, 8, and 12 as unpatentable over Holland and Roe. II. Rejection of Claims 9 and 10 The rejections of dependent claims 9 and 10 inherit the same infirmities discussed above in connection with independent claim 1. See Final Act. 17. For the same reasons that we reverse the rejection of claims 1–5, 8, and 12, we also reverse the rejections of claims 9 and 10. CONCLUSION The Examiner’s rejections are reversed. Appeal 2019-005984 Application 14/774,559 12 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 8, 12 103 Holland, Roe 1–5, 8, 12 9 103 Holland, Roe, Hansen 9 10 103 Holland, Roe, Pardey 10 Overall Outcome 1–5, 8–10, 12 REVERSED