Ex Parte Bordet et al

Patent Trials and Appeals Board

May 30, 2019

12089467 - (D) (P.T.A.B. May. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/089,467 08/21/2008 Laurent Bordet
22850 7590 06/03/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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. CONFIRMATION NO.
323734US41X PCT 2928
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
06/03/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENT BORDET, LAURENT GILLOT, ELIETTE PINEL,
and ERIC GARD
Appeal2017-009803
Application 12/089,467
Technology Center 1700
Before CATHERINE Q. TIMM, BEYERL YA. FRANKLIN, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1, 2, 12, 13, 16-19, 27, 29-32, 34, 35,
and 51. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We cite to the Specification ("Spec.") filed April 7, 2008; Final Office
Action ("Final Act.") dated August 26, 2016; Appellants' Appeal Brief
("Br.") filed March 27, 2017; and Examiner's Answer ("Ans.") dated May
11, 2017. A hearing was held May 23, 2019, a transcript of which will be
made of record in due course.
2 Appellants identify Vallourec Oil & Gas France as the real party in
interest. Br. 1.
Appeal2017-009803
Application 12/089,467
BACKGROUND
The subject matter on appeal relates to protective coatings applied to
threaded elements, such as threaded tubes used in hydrocarbon wells. Spec.
1. The coatings are formulated to reduce wear (so-called "galling") during
repeated makeup-breakout cycles involving tightening and loosening of the
threaded elements. Id. at 3. Claim 1-the sole independent claim-is
reproduced below.
Claim 1: A threaded element for a threaded tubular
connection which is resistant to galling, comprising:
a threading coated with a solid coating including a solid
matrix in which particles of solid lubricants are dispersed, said
solid matrix including at least one metal soap, wherein the at
least one metal soap contributes to capture debris of the solid
coating produced by friction,
wherein ( 1) the so lid coating comprises by weight of the
solid coating:
solid matrix 70% to 95% by weight of the coating;
and
solid lubricants 5% to 30% by weight of the
coating, and
(2) the solid matrix comprises by weight of the
solid matrix:
polyethylene homopolymer 15% to 90%,
carnauba wax 5% to 3 0%,
zinc stearate 5% to 30%,
calcium sulphonate derivative O to 50%,
alkyl polymethacrylate O to 15%,
colorant O to 1 %, and
antioxidant O to 1 %.
Br. 10-11 ( Claims Appendix) ( emphasis added to highlight a key recitation
in dispute).
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Appeal2017-009803
Application 12/089,467
REJECTIONS
Claims 1, 2, 13, 16, 18, 19, 22-26, 29, 33-35, and 51 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Goto,3 Higai,4 Petelot,5 and
Matsumoto.6 Final Act. 2-9.7
Each remaining claim on appeal stands rejected for the reasons
applied against claim 1 and further in view of Anraku, 8 Calvo,9 Yamamoto, 10
Fukui, 11 and/or Kesavan. 12 See Final Act. 9-16. 13
3 US 2003/0160446 Al, published August 28, 2003.
4 US 2004/0249036 Al, published December 9, 2004.
5 US 2003/0144158 Al, published July 31, 2003.
6 US 2004/0239105 Al, published December 2, 2004.
7 The Examiner additionally refers to The Merck Index, 14th ed., but only in
connection with claim 2. See Final Act. 5 ,-J 18.
8 EP 1 411 288 Al, published April 21, 2004.
9 US 2005/0176592 A 1, published August 11, 2005.
10 EP 1 211 451 Al, published June 5, 2002.
11 US 4,630,849, issued December 23, 1986.
12 US 6,228,815 Bl, issued May 8, 2001.
13 Each of claims 30-32 depends from claim 1. With regard to these
dependent claims, the Examiner identifies a combination of prior art
references that does not include the combination of references relied upon in
rejecting parent claim 1. Compare Final Act. 12-16, with id. at 2. This
appears to be the result of a typing or copying error stemming from a prior
Office Action. See Non-Final Office Action mailed March 22, 2016. We
view the Examiner's explanation of the rejection of claims 30-32 sufficient
to put Appellants on notice of the basis for these rejections-namely, the
reasoning and evidence presented in connection with claim 1 and further in
view of Fukui ( claims 30, 31) or Kesavan ( claim 32). We consider the
Examiner's transcription error harmless and Appellants do not separately
argue these claims.
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Appeal2017-009803
Application 12/089,467
OPINION
Appellants do not separately argue any claim, and direct their
arguments solely to features recited in independent claim 1. See Br. 6-8.
We address Appellants' arguments with regard to claim 1. All of the
remaining claims and rejections stand or fall based on the resolution of the
issues arising for the rejection of claim 1. Compare Final Act. 2-16, and
Ans. 2-16, with Br. 6-8.
Relevant to Appellants' arguments on appeal, the Examiner finds that
Goto discloses a threaded tubular connection element with a galling-resistant
protective coating that includes a solid lubricant powder dispersed in a solid
binder matrix. Final Act. 3 ( citing Goto ,-J,-J 32, 44, 45). The Examiner finds
that Goto does not disclose zinc stearate metal soap as a matrix component,
but that Higai teaches zinc stearate metal soap was known to impart lubricity
and anti-rust properties to a galling-resistant protective coating. Id. ( citing
Higai ,-J,-J 31, 32). The Examiner also finds that Goto does not disclose
camauba wax as a matrix component, but that Petelot teaches use of animal,
vegetable, or synthetic wax for galling and corrosion resistance, and that
Matsumoto identifies camauba wax as a known wax suitable for that
purpose. Id. at 3-4. In light of these teachings, the Examiner finds that one
of ordinary skill in the art would have had a reason to include zinc stearate
metal soap and camauba wax as matrix components in Goto' s protective
coating. Id.
Appellants argue that Higai would not have provided a reason to add
"large amounts of zinc stearate and large amounts of low-melting point
camauba wax" to Goto' s coating. Br. 6. Instead, Appellants contend, Higai
"would lead one of ordinary skill in the art away from adding zinc stearate to
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Appeal2017-009803
Application 12/089,467
compositions containing large amounts of camauba wax." Id. at 7.
Particularly, Appellants argue that Higai provides a "low amount" of
polyethylene wax, and states that "the use of large amounts of organic
lubricants (wax) may impair galling resistance." Id. ( citing Higai ,i 31 ).
Having considered the evidence in light of Appellants' arguments, we
are not persuaded of reversible error.
At the passage relied upon by Appellants, Higai discusses
conventional wax lubricants. See Higai ,i 31 ("Conventionally, an organic
lubricant such as polyethylene wax is often used."). According to Higai,
"the use of a large quantity of the organic lubricant to fulfill the requirement
for higher lubricity may cause impaired galling resistance." Id. However,
neither Goto nor Higai predominantly employs wax for lubricity. Goto
discloses a galling-resistant protective coating that includes a lubricating
powder dispersed in a thermoplastic polyethylene resin. Goto
,i,i 45-46. Higai similarly discloses thermoplastic resin coatings, and
teaches that adding metallic soap, such as zinc stearate, to the thermoplastic
resin advantageously imparts lubricity and rust prevention. Higai ,i,i 20, 31.
As the Examiner indicates at page 17 of the Answer, Higai is relied upon as
evidence of a reason to include zinc stearate, not wax. Appellants' argument
that Higai discourages use of large amounts of polyethylene wax in a
galling-resistant coating does not refute the Examiner's determination that
Higai provides a reason to add zinc stearate metallic soap to Goto' s resin-
based coating.
Appellants also argue that Higai requires that any wax present in the
lubricant must have a melting temperature greater than 100 °C, and that
camauba wax does not meet that criteria because it has a melting of 82-86
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Appeal2017-009803
Application 12/089,467
~C. Br. 7 ( citing Higai ,i,i 39, 40). At the relied upon passages, Higai
teaches that an organic lubricant "may be added" to the resin coating (Higai
,i 39), and, if added, may be selected from polyethene wax and flourene wax
"which have a melting point of 100° C or more." Id. ,i 40. Appellants do
not explain how Higai's teaching of an optional wax additive characterized
as having a given melting temperature would have precluded use of any wax
having a lower melting temperature. Nor do Appellants present evidence to
support the contention that the recited camauba wax is characterized by a
lower melting temperature. Moreover, the Examiner relies on Petelot and
Matsumoto as collective evidence of a reason to use camauba wax in an
anti-galling coating such as that of Goto. Final Act. 4. Goto states that
various additives may be provided in the disclosed solid lubricant coating,
including a thickening agent. Goto ,i 72. Petelot teaches use of animal,
vegetable, or petroleum waxes as a thickening agent to aid film forming
properties in an anti-galling coating. Petelot ,i,i 5 8-61. Petelot teaches a
thickening agent concentration as low as 5 percent by weight. Id. ,i 86.
Matsumoto identifies camauba waxes as examples of vegetable waxes
suitable for use in an anti-galling coating on steel pipe threaded joints.
Matsumoto ,i 52. Appellants neither dispute nor address the Examiner's
findings regarding the teachings of Petelot and Matsumoto.
For the foregoing reasons, Appellants have not persuaded us that the
Examiner reversibly erred in finding that one of ordinary skill would have
had a reason to add zinc stearate and camauba wax in Goto' s disclosed solid
coating.
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Application 12/089,467
CONCLUSION
We sustain the Examiner's rejections.
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
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