Ex Parte Carr et alDownload PDFPatent Trial and Appeal BoardDec 22, 201512681872 (P.T.A.B. Dec. 22, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/681,872 04/06/2010 26722 7590 12/24/2015 OSHA LIANG/MI TWO HOUSTON CENTER 909 FANNIN STREET, SUITE 3500 HOUSTON, TX 77010 FIRST NAMED INVENTOR Brian S. Carr 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. 055421216003 8047 EXAMINER BRANCH, CATHERINE S ART UNIT PAPER NUMBER 1763 NOTIFICATION DATE DELIVERY MODE 12/24/2015 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): DOCKETING@OSHALIANG.COM bergman@oshaliang.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN S. CARR, BENJAMIN L. HOLTON, and MICHAEL A. TIMMERMAN Appeal2014-002054 Application 12/681,872 Technology Center 1700 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL 1 Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the Examiner's decision finally rejecting claims 1-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 Our decision refers to Appellants' Specification (Spec.) filed April 6, 2010, Appellants' Appeal Brief (Br.) filed July 11, 2013, the Examiner's Answer (Ans.) mailed October 2, 2013. 2 According to Appellants, the real party in interest is M-I L.L.C. (M-I). Br. 4. Appeal2014-002054 Application 12/681,872 STATEMENT OF THE CASE The invention relates to a shaker for separating solids from a drilling fluid as shown in Appellants' Figure 2B, reproduced below. 110 __ i---160 Appellants' Figure 2B, depicting a cross section of the shaker 201 210 170 The shaker includes a top screening deck 130 and a flow-back pan 160 beneath the top screening deck and divided into a plurality of channels for receiving an initially separated drilling fluid from the top screening deck. Spec. if 6. A fluid distribution box 210 includes a plurality of conduits, each corresponding to one of the plurality of channels such that each channel delivers a stream of the initially separated drilling fluid to the corresponding conduit. Id. Each conduit directs a corresponding stream of initially 2 Appeal2014-002054 Application 12/681,872 separated drilling fluid to a corresponding one of the middle screening deck 140 and the bottom screening deck 150. Id. As further shown in Appellants' Figures 2A and 3A, reproduced below, the fluid distribution box 210 includes a plurality of horizontal partitions 221 and vertical partitions 222 in combination with a cover 201 (removed for illustrative purposes in these figures) to direct the fluid streams A, C to the middle screening deck and the fluid streams B, D to the bottom screening deck. Id. at i-f 25. flG. ;M FIG. 3A Appellants' Figures 2A and 3A, depicting the fluid distribution box The Rejections The Examiner maintains, and Appellants request our review of, the following grounds of rejection: A. Claims 1-3, 5, 6, 9-11, 13, 15, and 20 under 35 U.S.C. § 102(b) as anticipated by Bailey; B. Claims 4 and 12 under 35 U.S.C. § 103(a) as unpatentable over Bailey in view of Melin; 3 Appeal2014-002054 Application 12/681,872 C. Claims 7, 14, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over Bailey in view of Roff; and D. Claims 8, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Bailey. Appellants separately argue the claims in accordance with the following groupings of claims: I. Claims 1-3, 5, and 6; II. Claims 9-11 and 13; III. Claims 15 and 20; IV. Claims 4 and 12; V. Claims 7, 14, 18, and 19; and VI. Claims 8, 16, and 17. Accordingly, we serially address Appellants' arguments with respect to the above groupings belo\x1. ANALYSIS Group I: Claims 1-3, 5, and 6 Appellants state that claims 1-3, 5, and 6 stand or fall together. Br. 6. We select claim 1 to decide the issues raised by Appellants' arguments. 37 C.F.R. § 41.37(c)(l)(iv)(2012). Independent claim 1 is reproduced below from the Claims Appendix to Appellants' Brief. 1. A shaker for separating solids from a drilling fluid compnsmg: a top screening deck; a flow-back pan positioned beneath the top screening 4 Appeal2014-002054 Application 12/681,872 deck for receiving an initially separated drilling fluid from the top screening deck; wherein the flow-back pan is divided into a plurality of channels; a fluid distribution box disposed at an end of the tlow- back pan, the fluid distribution box comprising a plurality of vertical partitions to form a plurality of conduits within the fluid distribution box; wherein each channel of the flow-back pan corresponds to one of the plurality of conduits in the fluid distribution box and each channel communicates a stream of the initially separated drilling fluid to the corresponding conduit; at least one middle screening deck; and a bottom screening deck; wherein each conduit routes the stream of initially separated drilling fluid to a corresponding one of the at least one middle screening deck and the bottom screening deck. We sustain the rejection of claim 1 based on the findings of fact, conclusions of law, and rebuttals to arguments well expressed by the Examiner in the Final Office Action and the Answer. The following comments are added for emphasis. A reference is anticipatory under § 102(b) when it discloses each and every element of the claimed invention, arranged or combined in the same way as in the claim. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The Examiner finds Bailey teaches a vibratory screening apparatus for removing drilling cuttings from drilling fluids, including a stack of screen assemblies or decks 8 that are separated by flow directing trays or pans 9. Ans. 2. The Examiner also finds flow directing trays 9 are divided into a plurality of feed chutes or channels 71, 72 by lateral divider 68. Id. In addition, the Examiner finds lateral divider 68 separates a fluid distributor 15 into conduits that correspond to the channels of flow directing trays 9. 5 Appeal2014-002054 Application 12/681,872 Id. In particular, the Examiner finds Bailey teaches a plurality of vertical partitions that separate fluid flows as shown in Figures 5A-5C. Id. Appellants contend that Bailey directs the entire fluid either to one screen or allows the entire fluid pass by the screen. Br. 11 and 12. According to Appellants, Bailey fails to provide a mechanism for part of the fluid to be directed to one screen, while allowing another part to pass to another screen. Id. Appellants urge that Bailey fails to teach or suggest a flow-back pan divided into a plurality of channels and a fluid distribution box comprising a plurality of vertical partitions. Id. In this regard, Appellants argue that Bailey's flap valves 20 are not vertical nor are they partitions. Id. However, as the Examiner notes (Ans. 6), Appellants focus on some non-anticipating embodiments of Bailey, while ignoring other anticipating embodiments. In this regard, we note that the embodiment of Bailey's Figures 4A, 4B, and 5C which cieariy depict a fluid flow divided into three streams, where one stream is directed from flow-back pan 9' by flapper 20" in flow distributor 15 to middle screening deck 8", while two other streams are directed from flow-back pan 9' by flappers 20" in flow distributor 15 to bottom screening deck 8'". Bailey, 7:16-25 and 8:28-9:15. Further, Bailey teaches that the flow distributor 15 is formed and arranged into inside and outside passages 17, 18. Id. These passages are equivalent to Appellants' plurality of conduits within the fluid distribution box. In addition, as the Examiner further finds, Bailey teaches the passages of the flow distributor 15 may be conveniently defined by walls extending downwardly inside a downwardly extending chamber so as to provide a lateral subdivision of the chamber providing predetermined proportions of 6 Appeal2014-002054 Application 12/681,872 the fluid flow. Ans. 6. These walls are equivalent to Appellants' vertical partitions. Thus, contrary to Appellants' argument, Bailey does provide a mechanism for separating the initially separated fluid, directing one stream to the middle screening deck and the other streams to the bottom screening deck. See Bailey, Fig. 5C. As such, Appellants fail to identify reversible error in the Examiner's findings in support of the anticipation rejection. Accordingly, we will sustain the Examiner's rejection. Group II: Claims 9-11and13 Appellants state that claims 9-11 and 13 stand or fall together. Br. 6. We select claim 9 to decide the issues raised by Appellants' arguments. 37 C.F.R. § 41.37(c)(l)(iv)(2012). Independent claim 9 is reproduced below from the Claims Appendix to Appellants' Brief. 9. An apparatus for distributing an initiaiiy separated driiiing fluid in a shaker, the apparatus comprising: a flow-back pan having a plurality of channels; and a fluid distribution box disposed at an end of the flow-back pan, the fluid distribution box comprising a plurality of horizontal partitions and a plurality of conduits, each of the plurality of horizontal partitions corresponding to one of the plurality of conduits, and each of the plurality of conduits corresponding to one of the plurality of channels of the flow-back pan; wherein each of the plurality of horizontal partitions of the plurality of conduits is configured to route the initially separated drilling fluid to a corresponding one of a plurality of secondary screening surfaces. We sustain the rejection of claim 9 based on the findings of fact, conclusions of law, and rebuttals to arguments well expressed by the 7 Appeal2014-002054 Application 12/681,872 Examiner in the Final Office Action and the Answer. The following comments are added for emphasis. Appellants reassert the arguments raised against the Examiner's rejection of claim 1. Br. 12-13. We have not found these arguments persuasive for the reasons given above. Appellants further argue that Bailey fails to show a plurality of horizontal partitions that correspond to the plurality of conduits, where the plurality of conduits correspond to the plurality of channels of the flow-back pan. Br. 13. Appellants assert that while Bailey does disclose horizontal partitions (flap valves 20), these partitions do not correspond to a plurality of conduits. Id. Moreover, Appellants assert that because Bailey does not show a plurality of channels on the flow-back pan, "it [is] logically impossible for Bailey to have a plurality of horizontal partitions that correspond." Id. However, again, AppeUants' arguments ignore the embodiment depicted in Figures 4A, 4B, and 5C wherein Bailey's horizontal partitions 20", 20"' correspond to flow passages or conduits 17, 18, respectively across flow distributor 15. See Ans. 6-7. In addition, Bailey's Figures 5A-5C show the flow directing trays or pans 9 divided into a plurality of channels corresponding to the flow passages. Id. Appellants fail to address the Examiner's specific findings as to Bailey's teachings on each of these claim limitations. No Reply Brief has been filed. As such, Appellants have not identified reversible error in the Examiner's findings in support of the anticipation rejection of claim 9. It follows that we will sustain the Examiner's rejection as to claim 9. 8 Appeal2014-002054 Application 12/681,872 Group III: Claims 15 and 20 Appellants state that claims 15 and 20 stand or fall together. Br. 6. We select claim 15 to decide the issues raised by Appellants' arguments. 3 7 C.F.R. § 41.37(c)(l)(iv)(2012). Independent claim 9 is reproduced below from the Claims Appendix to Appellants' Brief. 15. A method of separating solids from a drilling fluid comprising: depositing the drilling fluid onto a top screening deck in a shaker; vibrating the shaker; separating the drilling fluid into an initially separated drilling fluid component and a first solid component on the top screening deck; discharging the first solid component from the shaker; receiving the initially separated drilling fluid component onto a flow-back pan comprising a plurality of channels; dividing the initially separated drilling fluid component into a plurality of streams defined by the channels on the flow-back pan; directing each stream of the initiaUy separated driiiing fluid component in each channel to a corresponding conduit in a fluid distribution box disposed at an end of the flow-back pan, wherein the fluid distribution box comprises a plurality of partitions to define each channel within the fluid distribution box; and routing each stream of the initially separated drilling fluid component in each conduit to one of a middle screening deck and a bottom screening deck in the shaker. We sustain the rejection of claim 15 based on the findings of fact, conclusions of law, and rebuttals to arguments well expressed by the Examiner in the Final Office Action and the Answer. The following comments are added for emphasis. Appellants contend that Bailey fails to disclose the step of initially separating the fluid and then dividing the initially separated fluid. Br. 14. 9 Appeal2014-002054 Application 12/681,872 Appellants assert that Bailey makes no mention of dividing an initially separated drilling fluid into a plurality of streams, but instead teaches the entire fluid stream is sent, undivided, to either the middle screen or the bottom screen, via the first flap valve. Id. However, Appellants are directing their attention to Bailey's embodiments of Figures 2A-3B, 5A, and 5B, where the entire fluid flow is directed to either the middle screen or the bottom screen. However, even in these embodiments, Bailey initially separates the fluid from solids using the upper screening deck 8', divides the fluid flow into a plurality of streams defined by channels in the flow-back pan 9' (as seen in Figures 5A-5C), directs each stream into a corresponding passage or conduit in a fluid distributor 15 disposed at an end of the flow-back pan, and routing each stream in each passage or conduit to one of a middle screening deck and a bottom screening deck. We note that claim 15 does not require that some of the streams are routed to the middie screening deck and others of the streams are routed to the bottom screening deck. As such, each of Bailey's embodiments shown in Figures 2A-5C reads on Appellants' claim 15. Notwithstanding this finding, we note, as did the Examiner, Bailey's Figure 4A, 4B, and 5C embodiment specifically depicts routing some of the streams are routed to the middle screening deck and others of the streams are routed to the bottom screening deck. Ans. 6-7. Accordingly, we are not persuaded of reversible error in the Examiner's findings in support of the anticipation rejection of claim 15. We will sustain the Examiner's rejection of claim 15. 10 Appeal2014-002054 Application 12/681,872 Group IV: Claims 4 and 12 Appellants state that claims 4 and 12 stand or fall together. Br. 6. We select claim 4 to decide the issues raised by Appellants' arguments. 37 C.F.R. § 41.37(c)(l)(iv)(2012). Claim 4 depends from claim 1, and further requires that "the flow- back pan comprises a flow-back surface having a central upward bend perpendicular to the fluid distribution box to divide the initially separated drilling fluid into two streams." The Examiner relies on the previous findings with regard to Bailey. The Examiner further finds Melin teaches a feed stream splitter incorporating a central apex or ridge which divides the feed into two streams. Ans. 4. The Examiner concludes it would have been obvious to incorporate such a central apex or ridge into the surface of Bailey's flow directing tray 9 as an alternative to vertical dividers or walls to create the channeis directing fluid flow. Id. Appellants note that Melin is not dealing with an initially separated stream, but rather is dividing the stream for subsequent processing. Br. 16. Moreover, Appellants contend that the Examiner has provided no line of reasoning as to why a skilled artisan would be motivated to incorporate this initial inverted V-shape into Bailey. Id. However, Appellants' argument fails to address the basis of the Examiner's rejection which is a combination of Bailey and Melin. The Examiner is merely relying on Melin to establish that flows may be divided by a central upward bend or V-shape ridge as an alternative to the dividers or walls depicted in Bailey. As Bailey teaches dividing an initially separated fluid into a plurality of streams in a plurality of channels, it is not necessary 11 Appeal2014-002054 Application 12/681,872 that Melin teach or suggest this feature. Finally, although Appellants contend the Examiner has provided no line of reasoning as to why one of ordinary skill in the art would have been motivated to incorporate Melin's inverted V-shape into Bailey, we disagree. The Examiner articulates that Melin's V-shape ridge would act or function in the same manner as Bailey's divider or walls. Ans. 7. As such, Melin's V-shape ridge and Bailey's dividers or walls are known functional equivalents, where substitution of one for the other would have been obvious absent an unexpected result. KSR Int'! Co. v. Teleflex Inc., 500 U.S. 398, 416 (2007) ("when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.") Appellants have failed to show that the Examiner's finding of equivalency is erroneous. Therefore, we are not persuaded of reversible error in the Examiner's obviousness rejection of ciaim 4. It foiiows that we win sustain this rejection. Group V: Claims 7, 14, 18, and 19 Appellants state that claims 7, 14, 18, and 19 stand or fall together. Br. 6. We select claim 7 to decide the issues raised by Appellants' arguments. 37 C.F.R. § 41.37(c)(l)(iv)(2012). Claim 7 depends from claim 1, and further requires that "the flow- back pan is slidable to select between parallel and series flow in the at least one middle screening deck and the bottom screening deck." The Examiner relies on the previous findings with regard to Bailey. The Examiner further finds Roff teaches a shaker 35 with two parallel screens 36, 37 that are separated by removable tray 75. Ans. 4. The 12 Appeal2014-002054 Application 12/681,872 Examiner finds, when tray 75 is removed, shaker 35 becomes a "cascading" or serial shaker such that material is screened through both screens 3 6, 3 7. Id. The Examiner concludes it would have been obvious to incorporate a removable flow directing tray as taught by Roff into Bailey's vibratory screen apparatus so that initially separated drilling fluid may flow directly from the top screen to the middle screen, thereby creating serial flow, which would provide finer screening of the drilling fluid. Id. at 4--5. Appellants contend that the Examiner fails to provide any reasoning as to why a person of ordinary skill in the art would be motivated to modify Bailey to include removable panels. Br. 19. However, this argument fails to address the Examiner's articulated reasoning as set forth above that the ordinary artisan would have been motivated to have modified Bailey to include removable panels as taught by Roff "so that initially separated drilling fluid may flow directly from the top screen to the middle screen, thereby creating a seriai flow, which wouid provide finer screening of the drilling fluid." See Ans. 5. As such, Appellants have not identified reversible error in the Examiner's obviousness rejection of claim 7. We will, therefore, sustain this rejection. Group VI: Claims 8, 16, and 17 Appellants do not separately argue claims 8, 16, and 17, but instead broadly assert that "the Examiner is merely engaging in improper hindsight reconstruction, as Bailey provides no guidance to one of ordinary skill in the art to modify the reference to achieve the claimed apparatus or method." Br. 20. 13 Appeal2014-002054 Application 12/681,872 However, Appellants do not address the specific findings and obviousness conclusions articulated by the Examiner in the rejection of these claims or direct us to any error in those findings and conclusions. Thus, Appellants have failed to show the Examiner engaged in improper hindsight reasoning in the rejection of claims 8, 16, and 17. As such, we will sustain the Examiner's obviousness rejection of these claims for the reasons well stated on pages 5-6 of the Examiner's Answer. DECISION Upon consideration of the record, and for the reasons given above and in the Answer, the decision of the Examiner rejecting claims 1-3, 5, 6, 9-11, 13, 15, and 20 under 35 U.S.C. § 102(b) as anticipated by Bailey, and rejecting claims 4, 7, 8, 12, 14, and 16-19 over Bailey alone or further in view of Melin or Roff, is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED sl 14 Copy with citationCopy as parenthetical citation