Ex Parte 6435275 et al

Patent Trial and Appeal Board

Feb 27, 2014

90012589 (P.T.A.B. Feb. 27, 2014)

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.
90/012,589 09/14/2012 6435275 15268.105172 4985
59081 7590 02/28/2014
KING & SPALDING, LLP
1100 LOUISIANA ST., STE. 4000
ATTN.: IP Docketing
HOUSTON, TX 77002-5213
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/28/2014 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
____________________

Ex parte DOWNHOLE PRODUCTS, LTD.
Appellant, Patent Owner
____________________

Appeal 2014-002025
Reexamination Control 90/012,589
Patent 6,435,2751
Technology Center 3900
____________________

Before JENNIFER D. BAHR, JAMES P. CALVE, and JILL D. HILL,
Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued August 20, 2002, hereinafter “’275 patent.”
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from a Final
Rejection of claims 1-20, claims 1 and 14 having been amended and claims
19 and 20 having been added during the reexamination. We have
jurisdiction under 35 U.S.C. §§ 134(b) and 306. The ‘275 patent is the
subject of litigation entitled Downhole Prods. Ltd. v. Summit Energy Servs.,
Inc., TXSD-4-13-cv-00444 (S.D.Tex. 2013) which has been stayed pending
the present reexamination proceeding.
We AFFIRM.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. (Amended) A casing centralizer for centralizing a tubular
casing in a well bore, the casing centralizer comprising an
annular body including multiple well-bore contacting surfaces
extending from an outer surface thereof, the annular body
having a substantially cylindrical bore extending longitudinally
therethrough, the annular body being formed from[at least one
material selected from the group consisting of] a plastic
material[elastomeric material and rubber material], the
substantially cylinderical bore being a clearance fit around the
tubular casing to be centralized[centralised] by the casing
centralizer[centraliser], wherein the casing
centralizer[centraliser] is of unitary construction.

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Rejections
Appellant requests our review of the following rejections:
I. Claims 1, 2, 6-9, 11-16, 19, and 20 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Mikolajczyk (US 5,095,981, iss.
Mar. 17, 1992) and Carson (US 4,088,185, iss. May 9, 1978).
II. Claims 14-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Mikolajczyk, Carson, and Russell (US 4,796,670, iss. Jan. 10,
1989).
III. Claims 3-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Mikolajczyk, Carson, and Carlson (GB 2 288 198 A, pub. Nov. 10,
1995).
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Mikolajczyk, Carson, and Langer (US 4,984,633, iss. Jan. 15, 1991).

OPINION
Rejection I
In contesting this rejection, Appellant argues claims 1, 2, 6-9, 11-16,
19, and 20 together. App. Br. 6-21. Thus, we select claim 1 as
representative to decide the appeal of this rejection, with the remaining
claims standing or falling with claim 1. 37 C.F.R. § 41.37(c)(iv).
The Examiner found that Mikolajczyk discloses a casing centralizer as
called for in claim 1, except for the casing centralizer being formed from a
plastic material. Final Rej. 3. The Examiner found that Carson discloses
use of plastic in making a centralizer and determined that “[o]ne of ordinary
skill in the art would have therefore recognized that Mikolajczyk could be
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made with plastic, in order to provide Mikolajczyk with the predictable
established function of plastic. Plastic is a widely used, readily available
material typically less expensive than metal.” Id. The Examiner further
explained that “Carson discloses that it is known to replace formerly metallic
well operation centralizers with plastic material without losing its wear
characteristics,” and reasoned that “[o]ne of ordinary skill in the art at the
time of the invention would be motivated by Carson to replace the material
of the casing centralizer of Mikolajczyk by a known plastic material that
could withstand the well bore environment as taught by Carson.” Ans. 4.
Appellant argues that Carson is not analogous art. App. Br. 7-14.
The thrust of Appellant’s non-analogous art argument is that casing
centralizers (the subject of Appellant’s invention) and paraffin scrapers (the
subject of Carson) have well-established and different meanings and
purposes in the field of downhole drilling and that they are not
interchangeable with one another. Id. at 8-11. Appellant argues that casing
centralizers and paraffin scrapers are in different fields of endeavor and
address completely different problems. Id. at 12.
In support of this argument, Appellant relies on declarations by Dr.
Billy Joe Livesay (hereinafter “Livesay Declaration” and “Updated Livesay
Declaration,” respectively). App. Br. Evidence App’x., Ex. A, B. The
Livesay Declarations state that “casing centralizers have a well-defined and
standardized purpose – to centralize casing in a well bore.” Updated
Livesay Decl., para. 9; see also Livesay Decl., paras. 4, 5; Updated Livesay
Decl., paras. 6-8. Dr. Livesay states that a paraffin scraper is a device that
removes or cuts through paraffin and other scale and deposits that collect on
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the inside of tubing, casing, flow lines, or pipelines in a downhole drilling
operation. Updated Livesay Decl., para. 6. According to Dr. Livesay, those
working in the oil and gas industry “do not consider sucker rod scrapers and
casing centralizers to be equivalent or even in the same or overlapping
technology areas.” Id. Further, Dr. Livesay avers that “it is my expert
opinion that a patent or other literature directed to a sucker rod and features
related to a sucker rod, e.g., scrapers, would not be considered when
contemplating a feature, problem, issue or change related to a casing
centralizer.” Id.
For purposes of showing obviousness under 35 U.S.C. § 103(a), “[a]
reference is reasonably pertinent if, even though it may be in a different field
from that of the inventor's endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor’s
attention in considering his problem.” In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992)). As explained in Clay, two criteria have evolved for
determining whether prior art is analogous: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved. Id. at 658-59.
The evidence before us in this record establishes that casing
centralizers and paraffin scrapers have distinct well-defined meanings and
functions in the field of downhole drilling and are not typically considered to
be interchangeable with one another. However, such lack of identity or
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interchangeability with casing centralizers does not disqualify Carson as
analogous prior art.
Dr. Livesay’s averment that literature directed to scrapers would not
be considered when contemplating a feature, problem, issue, or change
related to a casing centralizer strikes us as so overly-broad and sweeping as
to lack credibility. Merely by way of example, Langer evidences
recognition in the art of common design considerations for a variety of
different devices for use in well operations including but not limited to
drilling and cementing operations, wherein fluid must flow past the device.
Langer, col. 2, ll. 12-20. The types of devices discussed by Langer include
devices that coact with the interior of a tubular member as well as those that
coact with the interior of a wellbore. Id. at col. 6, ll. 35-38, 59-61. The
former category of devices would include paraffin scrapers and the latter
category would include casing centralizers. While Langer’s discussion of
these devices together within the context of shaping such devices to create or
enhance turbulence in well fluids with a nozzle effect (col. 1, ll. 8-13) does
not establish that persons skilled in the art necessarily would look to any or
all of the devices in contemplating any feature or problem related to one of
them, it does contradict quite effectively Dr. Livesay’s statement that
literature directed to scrapers would not be considered when contemplating
any feature or problem related to a casing centralizer.
Appellant repeatedly concedes, and the Livesay Declarations support
that the primary function of casing centralizers is to centralize the casing
within a well bore. As also made clear by the ‘275 Patent, casing
centralizers may also be employed on an inner casing to hold it out of direct
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contact with the outer casing. Col. 4, ll. 44-46. One of the problems
addressed by Appellant in the present invention was the selection of a
suitable material for use in forming the casing centralizer. ‘275 Patent, col.
4, ll. 47-52 (citing superior bearing properties, non sparking properties, and
corrosion resistance as advantageous properties of plastic material).
As pointed out by the Examiner (Ans. 2), Carson discloses paraffin
scrapers that “in addition to acting effectively as scrapers, act as
centralizers.” Carson, col. 6, ll. 7-8. Carson additionally points out that its
paraffin scrapers act as “insulators preventing electrolysis.” Id. Like
Appellant, Carson was concerned with finding a material having wear
characteristics superior to metal. Id. at col. 2, l. 67 – col. 3, l. 2; col. 8, ll.
24-25 (touting plastic scrapers “showing wear characteristics on the order of
ten times that of steel scrapers”).
Thus, Carson addresses a problem faced by Appellant, namely,
selecting a material possessing suitable properties for use in making a
component that serves a centralizing function in a downhole drilling
environment, albeit in a different location/stage of use. Additionally, like
Appellant, Carson sought a replacement for metal to provide an insulative
(i.e., non sparking) material with superior wear properties.
Thus, the Examiner did not err in considering Carson to be analogous
art.
Appellant also contends that the Examiner fails to establish a prima
facie case of obviousness, because the proposed combination of Carson with
Mikolajczyk renders Mikolajczyk inoperable for its intended purpose and
that Carson teaches away from combination with Mikolajczyk. App. Br. 15.
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The basis for these contentions is that the preferred plastic materials
discussed by Carson are selected for injection molding and shrink fitting the
paraffin scraper into place on the sucker rod such that the plastic firmly and
tightly grips the sucker rod, while Appellant’s casing centralizer must be
able to rotate freely around and move freely along the casing. App. Br. 16.
This line of argument is not convincing, because the Examiner does
not propose to injection mold and shrink fit Mikolajczyk’s casing centralizer
about the casing. Rather, the Examiner proposes merely to apply Carson’s
teachings with respect to material selection, not the forming process, to
Mikolaczyk’s casing centralizer.
As noted above, the Examiner articulated a reason for using a plastic
material as taught by Carson for Mikolaczyk’s casing centralizer, namely, to
replace a metallic (i.e., not electrically insulating or non sparking)
centralizing element with a plastic material (i.e., one that is insulative or non
sparking) without sacrificing the wear properties of metal. This reason has
rational underpinnings, because, as also discussed above, Carson teaches
that the plastic material of its paraffin scraper, which also acts as a
centralizer, is insulative or non sparking, and shows wear characteristics
superior to those of steel.
Finally, Appellant argues that the evidence of commercial success
submitted by Appellant outweighs the evidence of obviousness in this case.
App. Br. 20-21. Specifically, Appellant contends that the exclusive
licensing agreement that resulted from Appellant’s assertion of the ‘275
Patent against Top-Co LP, and the assertion of the ‘275 Patent against an
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alleged third party infringer are evidence of commercial success of the
claimed invention. Id.
The mere existence of a licensing agreement, without further evidence
pointing to a nexus between the decision to enter into the agreement and the
merits of the claimed invention, is entitled to little weight in an obviousness
determination, especially in a case such as this one, where the licensing
agreement stemmed from a litigation against the licensee. See EWP Corp. v.
Reliance Universal, Inc., 755 F.2d 898, 907-08 (Fed. Cir. 1985) (stating that
licensing programs “are not infallible guides to patentability. They
sometimes succeed because they are mutually beneficial to the licensed
group or because of business judgments that it is cheaper to take licenses
than to defend infringement suits, or for other reasons unrelated to the
unobviousness of the licensed subject matter”). Unlike the record presented
in Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA,
Inc., 699 F.3d 1340, 1353 (Fed. Cir. 2012), the record in this reexamination
proceeding is devoid of any evidence, such as the licensing royalty value
relative to potential litigation costs, to show that Top-Co’s decision to enter
into a licensing agreement with Appellant was attributable to the merits of
the invention, rather than the threat of litigation.
Appellant also argues that the assertion of the ‘275 Patent by
Appellant and Top-Co against an alleged infringing third party, Summit
Energy Services., Inc., in the litigation which has been stayed pending this
reexamination proceeding, shows commercial success. App. Br. 20-21.
Appellant’s assertion of this litigation is entitled to little weight. First, since
the litigation has been stayed, it is not clear whether the claim of
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infringement made therein has any merit. Moreover, not every competing
product that arguably falls within the scope of a patent is evidence of
copying; otherwise, “every infringement suit would automatically confirm
the nonobviousness of the patent.” Iron Grip Barbell Co., Inc. v. USA
Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). Our case law holds that
copying requires evidence of efforts to replicate a specific product, which
may be demonstrated through internal company documents, direct evidence
such as disassembling a patented prototype, photographing its features, and
using the photograph as a blueprint to build a replica, or access to the
patented product combined with substantial similarity to the patented
product. Iron Grip, 392 F.3d at 1325; see Akamai Techs., Inc. v. Cable &
Wireless Internet Servs., Inc., 344 F.3d 1186, 1196-97 (Fed. Cir. 2003);
Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1285-86
(Fed. Cir. 2000). Appellant does not point us to any such evidence in the
record of this reexamination proceeding.
For the above reasons, after weighing all of the evidence before us, we
conclude that the Examiner did not err in concluding that the subject matter
of claim 1 would have been obvious. We sustain the Examiner’s rejection of
claim 1 and of claims 2, 6-9, 11-16, 19, and 20, which fall with claim 1,
under 35 U.S.C. § 103(a) as being unpatentable over Mikolajczyk and
Carson.
Rejection II
Appellant groups claims 14-18 together in contesting this rejection.
App. Br. 21-22. Thus, we select claim 14 to decide the appeal of this
rejection, with claims 15-18 standing or falling with claim 14.
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In rejecting claim 14, the Examiner found that “Mikolajczyk does not
show the centralizer being divided as shown in Figure 7C of [the ‘275
Patent].” Final Rej. 7. The Examiner found, however, that Russell shows
such a division in Figure 2, and determined that one skilled in the art “would
have recognized that Mikolajczyk could be modified” to have such a
division “in order to provide Mikolajczyk with the predictable established
function of Russell, which is to allow the device to be wrapped in a bracelet-
like fashion.” Id.
Appellant argues that Russell is non-analogous art. App. Br. 21-22.
The basis of this argument appears to be that those skilled in the art
recognize pipe protectors, as disclosed in Russell, to be different from casing
centralizers. Id. Be that as it may, Russell addresses a problem addressed
by Appellant, namely, facilitating installation of a cylindrical outer element
about a long cylindrical inner element in the downhole drilling field by
forming the outer cylindrical element in two semi-cylindrical half sections.
See ‘275 Patent, col. 1, l. 67 – col. 2, l. 11; Russell, col. 1, ll. 36-38. Thus,
Appellant does not apprise us of error in the Examiner’s position that
Russell is analogous art.
Appellant also argues that “Russell teaches away from the claimed
combination” because Russell discloses that the drill pipe protector be
secured to the drill pipe, while claim 14 requires a clearance fit around the
centralizer. App. Br. 22. This argument is not convincing. Simply that
there are differences between two references is insufficient to establish that
such references teach away from any combination thereof. See In re Beattie,
974 F.2d 1309, 1312-13 (Fed. Cir. 1992). Prior art does not teach away
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from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Appellant does not point to, and we do not find, in Russell
any disclosure criticizing, discrediting, or otherwise discouraging use of the
semi-cylindrical half section technique taught by Russell in a clearance fit
arrangement.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s rejection of claim 14. We thus sustain the rejection of claim 14
and of claims 15-18, which fall with claim 14, under 35 U.S.C. § 103(a) as
unpatentable over Mikolajczyk, Carson, and Russell.
Rejection III
Appellant argues claims 3-5 together in contesting this rejection.
App. Br. 23-25. Thus, we select claim 3 as representative, with claims 4 and
5 standing or falling with claim 3.
The Examiner found that Carson does not discuss the use of filler
materials in the plastic. Final Rej. 7. The Examiner found that Carlson
discloses the use of fillers to improve characteristics, such as fuel and oil
resistance and abrasion resistance, and found in that disclosure a suggestion
to improve and enhance material characteristics of a base material by
compounding with filler materials. Id. at 7-8.
Appellant argues that Carlson is non-analogous art. App. Br. 23.
Appellant additionally argues that Carlson teaches away from the claimed
invention and that combination of Carlson with Mikolajczyk would render
Mikolajczyk unsatisfactory for its intended purpose. Id. at 24.
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The thrust of Appellant’s non-analogous art argument appears to be
essentially the same as that for the argument advanced regarding Carson and
Russell, namely, that pipe protectors are recognized by those skilled in the
art as being different from casing centralizers. This line of argument is not
convincing, as equivalence/interchangeability is not required to show that a
reference is analogous art. Carlson teaches that pipe protectors surround
pipe in downhole drilling operations and contact the metal casing into which
the pipe is introduced during the drilling operation. Carlson 1. In other
words, Carlson’s pipe protector spaces the pipe from the casing, much like a
casing centralizer spaces a casing from a well bore or spaces an inner casing
from an outer casing. Further, Carlson’s pipe protector provides maximum
wear surface contacting the well casing, much as Appellant’s casing
centralizer provides maximum well bore-contacting surface. Carlson 1; ‘275
Patent, col. 3, ll. 5-12. Additionally, Carlson, like the ‘275 Patent, addresses
the problem of selecting a material having suitable properties for achieving
such function. ‘275 Patent, col. 3, ll. 48-51; col. 4, ll. 47-52; Carlson 3-4.
As such, Carlson is reasonably pertinent to Appellant’s invention. We thus
conclude that the Examiner did not err in considering Carlson to be
analogous art to Appellant’s invention for purposes of obviousness under
35 U.S.C. § 103(a).
Appellant argues that because Carlson’s pipe protector is intended to
attach to the drill pipe without annular space between the protector and the
pipe, Carlson renders Mikolajczyk unsatisfactory for its intended purpose
and teaches away from Appellant’s claimed invention, which calls for a
clearance fit of the cylindrical bore of the casing centralizer and the tubular
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casing. App. Br. 24-25. For essentially the same reasons discussed above
with regard to Russell, Appellant’s argument is not convincing.
For the above reasons, Appellant’s arguments fail to apprise us of
error in the Examiner’s rejection of claim 3. We thus sustain the rejection of
claim 3 and of claims 4 and 5, which fall with claim 3, under 35 U.S.C.
§ 103(a) as unpatentable over Mikolajczyk, Carson, and Carlson.
Rejection IV
In rejecting claim 10, the Examiner found that Mikolajczyk does not
disclose blades of the centralizer being wider at the bottom. Final Rej. 8.
The Examiner found, however, that Langer discloses such a configuration.
Id.; Langer, fig. 7. Further, the Examiner found that Langer discloses this
shape “in order to ‘render turbulent or enhance the turbulence of fluid or
fluid and material flowing around or past the exterior surface.’” Final Rej.
8; see Langer, col. 6, ll. 39-41.
In contesting this rejection, Appellant argues only that Langer does
not cure the deficiencies of Mikolajczyk and Carson. App. Br. 25. For the
reasons discussed above, Appellant’s arguments alleging deficiencies in the
combination of Mikolajczyk and Carson are not convincing. We thus
sustain the rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable
over Mikolajczyk, Carson, and Langer.

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DECISION
The Examiner’s decision rejecting claims 1-20 is affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c).
AFFIRMED

hh

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PATENT OWNER:
King & Spalding, L.L.P.
1100 Louisiana St., Ste. 4000
Attn.: IP Docketing
Houston, TX 77002-5213

THIRD PARTY REQUESTER:
Jackson Walker, L.L.P.
901 Main Street
Suite 6000
Dallas, TX 75202