Ex Parte Du et al

Patent Trial and Appeal Board

Jun 30, 2016

12887628 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/887,628 09/22/2010
35204 7590 07/05/2016
SCHLUMBERGER ROSHARON CAMPUS
10001 Richmond
IP - Center of Excellence
Houston, TX 77042
FIRST NAMED INVENTOR
Michael H. Du
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.
68.0268DIV2 2871
EXAMINER
FREAY,CHARLESGRANT
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
usdocketing@slb.com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL H. DU, LA WREN CE C. LEE,
ARUNKUMAR ARUMUGAM, and ASHLEY C. KISHINO
Appeal2013-000736
Application 12/887,628
Technology Center 3700
Before DANIELS. SONG, BRETT C. MARTIN, and JENNIFER L.
MCKEOWN, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 1-3 and 5-10. Claim 4 was cancelled during
prosecution. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2013-000736
Application 12/887,628
CLAIMED SUBJECT MATTER
The claims are directed to "a motor protection system and method
comprising one or both of a protected bellows assembly and a three-
dimensional labyrinth assembly." Spec. i-f 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A submersible pumping system, comprising:
a submersible pump;
a submersible motor to power the submersible pump; and
a motor protector operatively coupled to the submersible
motor, the motor protector having a bellows assembly that moves
to expand and contract according to the volume of internal motor
fluid within the bellows assembly, the motor protector further
comprising at least one stop to limit movement of the bellows
assembly, the bellows assembly further comprising a biasing
structure which causes the bellows assembly to pressurize the
internal motor fluid within the bellows assembly to a positive
pressure relative to an external well fluid without relying on an
external pressure source.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Boyd
Gilmer et al.
(hereinafter "Gilmer")
us 3,041,977
us 4,477,235
2
July 3, 1962
Oct. 16, 1984
Appeal2013-000736
Application 12/887,628
REJECTIONS
Claims 1-3 and 5-10 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Ans. 2. 1
Claims 1, 5, 7, 8, and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Gilmer. Ans. 3.
Claims 6 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gilmer and Boyd. Ans. 4.
OPINION
Written Description
The Examiner rejects the claims as failing to comply with the written
description requirement due to the addition of the claim phrase "without an
external pressure source," which was added during prosecution. The
Examiner finds that this phrase is contradictory to the fact that "the
specification sets forth that the bellows system is pressurized by an outside
source before the system is loaded into a well." Ans. 2-3 (citing Spec. i-f
43). We agree with the Appellants, however, that the claims are clear "that
when subjected to the external well fluid, the claimed bellows does not rely
on any external pressure source to pressurize the internal fluid within the
bellows assembly." App. Br. 5. Specifically, the claim recites
1 Claims 1-3 and 5-10 were also rejected under 35 U.S.C. §112, second
paragraph as indefinite, but the Examiner withdrew this rejection. Ans. 5.
The Examiner also rejected claims 2 and 3 under 35 U.S.C. § 112, first
paragraph under a separate, additional basis, but withdrew this additional
basis for rejection as well. Id.
3
Appeal2013-000736
Application 12/887,628
"pressuriz[ing] the internal motor fluid within the bellows assembly to a
positive pressure relative to an external well fluid without relying on an
external pressure source." App. Br., Claims App'x. The language at issue
merely references an aspect of how the biasing member applies pressure to
the bellows in the well and is not meant as an exclusionary phrase to
eliminate all other possible ways of affecting pressure within the bellows at
all times. Accordingly, we reverse the written description rejection of
claims 1-3 and 5-10.
Anticipation
Appellants rely on the arguments presented for the patentability of
claims 1 and 7 alone in rebutting the various rejections of dependent claims
5, 6, and 8-10. See App. Br. 11, 12. Accordingly, the disposition of the
rejections of claims 1 and 5-10 turns on our analysis of the rejection of
claims 1 and 7.
The Examiner finds that all of the limitations of claims 1 and 7 can be
found in Gilmer, with the limitations of the motor protector being found in
bottom module 8, which the Examiner refers to as a motor protector. Ans. 3.
According to the Appellants, the Examiner is incorrect because Gilmer
teaches that sealing module 7 is its motor protector while bottom module 8
"functions to provide a store of oil and to keep oil in the motors at a higher
pressure than the surrounding medium." App. Br. 10 (citing Gilmer col. 4,
11. 25-54). As such, the Appellants argue that Gilmer's motor protector
(sealing module 7) relies on an outside source (bottom module 8) to
pressurize the oil in contradiction of the claim language.
The Appellants, however, do not offer any explanation as to why
Gilmer' s bottom module cannot be considered a motor protector as asserted
4
Appeal2013-000736
Application 12/887,628
by the Examiner, or a component thereof~ and only states that Gilmer
"clearly describes its motor protector as 'sealing module 7. '" App. Br. 7.
Essentially, the Appellants attack a rejection that the Examiner has not
made. The rejection makes clear that each and every element of claim 1 is
present in Gilmer' s bottom module 8 and does not rely upon sealing member
7. See Ans. 9.
Furthermore, the Appellants, as noted supra in explaining the function
of Gilmer' s bottom module 8, appear to concede that the Examiner is correct
in describing the bottom module as containing all of the components
necessary to pressurize the oil as claimed, but only disagree in its use in the
rejection because it is allegedly an outside source with respect to sealing
module 7. App. Br. 10. As the Examiner correctly states, however,
Gilmer' s bottom module 8 "is a motor protector and has all the structure and
features and is capable of and does perform all of the recited functional,
intended use and desired results limitations set forth in the claims." Ans. 9-
10. It appears that if there is something to differentiate Gilmer' s bottom
module 8 from the motor protector in the patent application, it is not present
in the claims as written. Accordingly, we fail to see any persuasive
argument as to why bottom module 8 cannot be considered the motor
protector as claimed, or a component thereof.
We further note that the Appellants provide a list of claim elements
allegedly not found in Gilmer, but provide no explanation as to why these
various claim elements are not met. App. Br. 11. Merely reciting the
language of the claims and asserting that the prior art reference or
combination does not disclose or teach each claim limitation is insufficient.
See 37 C.F.R. § 41.37(c)(vii) ("A statement which merely points out what a
5
Appeal2013-000736
Application 12/887,628
claim recites will not be considered an argument for separate patentability of
the claim."); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
("[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.").
For the reasons stated above, we sustain the Examiner's rejection of
claims 1 and 7 as anticipated by Gilmer. Because the Appellants do not
separately argue the remaining dependent claims, we also sustain the
rejections of claims 5, 6, and 8-10 over Gilmer alone or in combination with
Boyd.
DECISION
The Examiner's rejection of claims 1 and 5-10 is affirmed. The
Examiner's rejection of claims 2 and 3 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
6