Ex Parte Dowd et al

Patent Trial and Appeal Board

Mar 3, 2016

13323468 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/323,468 12/12/2011
36735 7590 03/07/2016
PATTERSON & SHERIDAN, L.L.P. /Weatherford
24 Greenway Plaza, Suite 1600
HOUSTON, TX 77046
Edward M. Dowd
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.
WEAT/0352USC3 7494
EXAMINER
WONG, ERICK
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
03/07/2016 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):
PSDocketing@pattersonsheridan.com
Pair_eOfficeAction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD M. DOWD and JOHN J. GRUNBECK
Appeal2014-001642
Application 13/323,468
Technology Center 2800
Before JEAN R. HOMERE, WILLIAM M. FINK, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
FINK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 12-14 and 18-22. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 15-17 are objected to and indicated as being
allowable if rewritten in independent form to include the limitations of the
base claim and any intervening claims. Ans. 5.2
We reverse.
1 The real party in interest is identified as Weatherford/Lamb, Inc. Br. 3.
2 Our decision refers to Appellants' Appeal Brief filed April 9, 2013 ("Br.");
the Examiner's Answer mailed September 6, 2013 ("Ans."); and the original
Specification filed December 12, 2011 ("Spec.").
Appeal2014-001642
Application 13/323,468
STATEMENT OF THE CASE
Appellants' invention relates to an optical cable that circulates fluid
within the cable in order to purge hydrogen. Abstract.
Claim 12 is the independent claim on appeal. Claim 12 is illustrative
of Appellants' invention and is reproduced below:
12. An optical cable comprising:
an outer tube;
an inner tube disposed inside the outer tube, wherein a
flow path is disposed between the inner and outer tubes and
extends along a length of the cable, the flow path for controlling
flow of a fluid to remove hydrogen from the cable;
an optical fiber disposed inside the inner tube; and
at least one flow tube disposed inside the outer tube,
wherein the flow path includes an interior of the flow tube.
Br. 16.
Claims 12-14 and 18-20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Rahman (US 4,859,024; August 22, 1989).
Claims 21 and 22 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Rahman in view of Parker (US 2008/0273852 Al;
November 6, 2008).
2
Appeal2014-001642
Application 13/323,468
Based on Appellants' arguments, the dispositive issue on appeal is
whether Rahman discloses, "at least one flow tube disposed inside the outer
tube, wherein the flow path includes an interior of the flow tube" as recited
in independent claim 12. See Br. 8-11.
ANALYSIS
In disputing the Examiner's rejection, Appellants contend because
"the ducts 1 7 of Rahman are not tubes, ... Rahman does not anticipate or
suggest at least one flow tube as required by claim 12." Br. 10. In
particular, Appellants contend that the recited "flow tube" is a third body,
which is missing from Rahman, "since empty space does not constitute a
body." Br. 9.
In response, the Examiner states:
Current Claim 12 recites the limitation of a flow tube disposed
inside an outer tube (18), wherein the flow path (17) includes an
interior of the flov,r tube (area defined by the fins 15 and tubular
member 16). Examiner interprets this limitation broadly and as
such, believes the air space disclosed by Rahman serves as a flow
path. This air space is defined as item 1 7 and is bounded by fins
15 in figure 1. This inner tube is a walled structure made up of
the fins (15) that interact with the tubular jacketing and is gas-
tight and sealed. Rahman's flow path and its inner flow tube are
one and the same. The current claim does not require a
completely separate tube to serve as the flow path. At the very
minimum, Rahman's flow path allows flow and makes up the
flow tube. These tubes are "gas ducts" which are sealed to prevent
leakage (column 2, lines 63---68). Since this walled duct is
substantially sealed to prevent gas leakage and is bounded on all
sides and sealed, and because there is no specific definition of a
"tube" recited in the specification, the broadest reasonable
interpretation of a walled duct having the same structural
characteristics of a tube is relied upon.
3
Appeal2014-001642
Application 13/323,468
Ans. 5---6 (citing Rahman, 2: 63---68, Fig. 1).
On the record before us, we are constrained to agree with Appellants.
We give claims their broadest reasonable interpretation consistent with the
Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). However, a construction that is unreasonably broad and
does not reasonably reflect the plain language and disclosure in the
specification will not pass muster. Microsoft Corp. v. Proxyconn, Inc., 789
F.3d 1292, 1298 (Fed. Cir. 2015).
Here, claim 12 recites an optical cable comprising an outer tube, inner
tube, a flow path disposed between the inner and outer tubes, and at least
one flow tube. Br. 12. Although the Examiner is correct that there is no
specific definition of the term "flow tube" in the Specification requiring it to
be a separate structure (i.e., "a third body") (Br. 10), we note the claim
recites this tube separately from the inner and outer tubes. Moreover, we
observe the Specification only refers to flow tube beginning with the
description of embodiment of Figure 10, where separate tubes 900 and 901
are added to the embodiment of Figure 3C. Spec. i-f 73. By contrast, Figure
3C discloses an inner and outer tube with a gap used as a flow path, but no
"flow tube." Id. i-f 52. Similarly, the embodiments of Figures 13 and 14 are
also described and depicted as including separate flow tubes. See id. i-fi-1 7 6,
77, Figs. 13, 14. Consequently, the Specification, as well as the claims,
support Appellants' position that the recited flow tube of claim 12 requires a
separate "third body" or structure, not simply the gap defined by the recited
inner and outer tubes. See Proxyconn, 789 F.3d at 1299.
4
Appeal2014-001642
Application 13/323,468
In view of this claim interpretation, the Examiner's finding that
Rahman' s "gas duct" defined as "an area defined by the fins 15 and tubular
member 16" discloses a flow tube (Ans. 5), is in error because it does not
identify a separate tube. This is confirmed by the Examiner's further note of
the "striking resemblance" of Rahman's Figure 1 to Appellants' Figure 3D.
Ans. 6. As discussed above, however, Appellants' Specification does not
include flow tubes until the Figure 10 embodiment. Consequently, we are
persuaded the cited portions of Rahman do not disclose the flow tube as
required by claim 12.
In view of the foregoing, we do not sustain the Examiner's
anticipation rejection of independent claim 12, as well as dependent claims
13-14 and 18-20. Additionally, because the combination of Rahman and
Parker does not cure the deficiency of the base rejection, we also do not
sustain the Examiner's § 10 3 (a) rejection of claims 21 and 22. 3
DECISION
We reverse the Examiner's final rejection of claims 12-14 and 18-22.
REVERSED
3 With respect to claims 21 and 22, we note the Examiner has indicated the
claims as allowable, however the rejection was not formally withdrawn. See
Ans. 4--5.
5