Ex Parte Elder et alDownload PDFPatent Trial and Appeal BoardMay 14, 201813623905 (P.T.A.B. May. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/623,905 09/21/2012 Russell ELDER 22850 7590 05/16/2018 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. 403149US41CONT 7170 EXAMINER LINFORD, JAMES ALBERT ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 05/16/2018 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 tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUSSELL ELDER and BERTRAND MAILLON Appeal 2016-004536 1 Application 13/623,9052 Technology Center 3600 Before LINDA E. HORNER, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Russell Elder and Bertrand Maillon ("Appellants") seek review under 35 U.S.C. § 134(a) of the Examiner's decision, as set forth in the Final Office Action dated December 19, 2014 ("Final Act."), and as further explained in the Advisory Action dated April 3, 2015 ("Adv. Act."), rejecting claims 1, 4, 6-13, 15-18, and 20-25. The record includes a 1 Appellants identify Application No. 12/861,497 as a related application. Appeal Br. 1-2. We render our decision as to the '497 Application (in Appeal No. 2016-004413) concurrently with this Decision. 2 Appellants identify Vallourec Oil and Gas France as the real party in interest. Appeal Br. 1. Appeal 2016-004536 Application 13/623,905 transcript of the oral hearing held on April 24, 2018 ("Tr."). 3 We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. BACKGROUND The disclosed subject matter relates to "[a] tubular threaded connection." Spec. i-f 2. Claims 1 and 16 are independent. Claim 1 is reproduced below, with emphasis added, and with bracketed letters added to identify certain language: 1. A threaded tubular connection, comprising: [a] a first tube, the first tube including a pin member extending from an end of a main body of the first tube to a terminal end of the first tube, the pin member including two radially offset sections of external threads, the two radially offset sections of external threads including a first thread section, a first non-threaded portion, a second non-threaded portion that is radially offset from the first non- threaded portion, and a second thread section, the first and second non-threaded portions being separate and distinct from the first and second thread sections, the first thread section being separated from the second thread section by the first non-threaded portion and the second non-threaded portion, the first thread section being located between the terminal end of the first tube and the first non-threaded portion and the second thread section being located between the second non- threaded portion and the end of the main body of the first tube, the first non-threaded portion including a 3 At the oral hearing, a representative for Appellants argued this Appeal and Appeal No. 2016-004413 together. As such, the same transcript has been added to the record for each Appeal. 2 Appeal 2016-004536 Application 13/623,905 first central seal surface located entirely on the first non-threaded portion; and [ b] a second tube, the second tube including a box member extending from an end of a main body of the second tube to a terminal end of the second tube, the box member including two radially offset sections of internal threads, the two radially offset sections of internal threads including a third thread section, a third non-threaded portion, a fourth non-threaded portion that is radially offset from the third non-threaded portion, and a fourth thread section, the third and fourth non-threaded portions being separate and distinct from the third and fourth thread sections, the third thread section being separated from the fourth thread section by the third non-threaded portion and the fourth non-threaded portion, the third thread section being located between the terminal end of the second tube and the third non-threaded portion and the fourth thread section being located between the fourth non- threaded portion and the end of the main body of the second tube, the fourth non-threaded portion including a second central seal surface located entirely on the fourth non-threaded portion, [ c] wherein the pin member includes a pin critical cross-section (PCCS) located at a thread engaged root of the second thread section that is closest to the end of the main body of the first tube, the box member includes a box critical cross- section (BCCS) located at a thread engaged root of the fourth thread section that is closest to the end of the main body of the second tube, the box member includes a box intermediate critical cross-section (BICCS) located at a thread engaged root of the third thread section that is closest to the second central seal of the second tube, and the pin member includes a pin intermediate critical cross-section (PICCS) located at a thread engaged root of the first 3 Appeal 2016-004536 Application 13/623,905 thread section that is closest to the first central seal of the first tube, [ d] wherein, in a made-up state, the first central seal surface engages the second central seal surface in a radial direction so as to form a fluid tight seal that extends in an axial direction of the threaded tubular connection, and, in the made-up state, the threaded tubular connection includes first and second radial clearance portions that are axially located on opposite sides of the fluid tight seal to isolate the fluid tight seal from the first through fourth thread sections of the tubular connection, wherein the first and second radial clearance portions are radial clearances between facing surfaces of the first non-threaded portion and the fourth non-threaded portion and are separate and distinct from the first through fourth thread sections, and [ e] wherein the first and second tubes satisfy the following relationships: PCCS is within approximately ± 5% of BCCS, and each of PCCS and BCCS is within approximately ± 5% (BICCS + PICCS). EVIDENCE RELIED ON BY THE EXAMINER Landriault US 4,629,224 Dec. 16, 1986 Tung Mallis us 4,753,460 CA 2 361 217 Al 4 June 28, 1988 May 6, 2002 Appeal 2016-004536 Application 13/623,905 REJECTIONS 4 1. Claims 1, 4, 6-13, 15-18, and 20-25 are provisionally rejected on the ground of nonstatutory double patenting as unpatentable over claims 1, 3-13, 15-18, and 20-27 of copending Application No. 12/861,497. 5 2. Claims 1, 4, 6-13, 15-18, and 20-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mallis and Tung. 3. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Mallis, Tung, and Landriault. DISCUSSION Rejection 1 The Examiner provisionally rejected claims 1, 4, 6-13, 15-18, and 20-25 on the ground of the nonstatutory double patenting in view of claims 1, 3-13, 15-18, and 20-27 of copending Application No. 12/861,497. Final Act. 3--4. Because the '497 Application is pending, the claims in that Application are subject to further amendment. Thus, this Rejection is not yet ripe for review and we do not reach it in this Appeal. See Ex parte Moncla, 95 USPQ2d 1884, 1885 (BP AI 2010) (precedential). 4 The Examiner rejected claims 1, 4, 6-13, 15-18, and 20-25 under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the subject matter regarded as the invention. See Final Act. 4--5. In the Advisory Action, the Examiner withdrew these rejections. See Adv. Act. 2. 5 Although the first sentence of this Rejection references "copending Application No. 13/623,905," the remaining discussion references "copending Application No. 12/861,497." Final Act. 3--4. Given that the '905 Application is the application at issue in this appeal, we understand the Examiner to have intended to refer to the '497 Application throughout the statement of this Rejection. 5 Appeal 2016-004536 Application 13/623,905 Rejection 2 Appellants argue the patentability of the two independent claims in this Rejection---claims 1 and 16----based on the same arguments and do not provide separate arguments for any dependent claims. Appeal Br. 8-11; Reply Br. 1---6. We select claim 1 as representative, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). For claim 1, the Examiner relied on Figure 1 of Mallis for clauses a, b, and d (as designated above), but stated that Mallis is "silent" as to the requirements of clauses c and e. See Final Act. 5-8. The Examiner found, however, that Tung teaches clauses c and e. See id. at 8-10. The Examiner articulated reasoning why it would have been obvious for one of ordinary skill in the art at the time of the invention to have modified Mallis with the relied-upon aspects of Tung. See id. at 9-10. Appellants argue that Mallis in view of Tung does not teach or suggest clause d of claim 1. See Appeal Br. 8. First, Appellants argue that Mallis discloses and depicts in Figure 2 6 "a metal to metal seal formed between sealing surface 16A of a box member 10 and surface 16 of a pin member 12." Appeal Br. 9. Appellants contend that, in Figure 2 of Mallis, "there is at most a single radial clearance between facing surfaces of non- threaded portions of the box member 10 and the pin member 12 (i.e. a single 6 The version of Figure 2 provided by Appellants is a more "formal" version of Figure 2 in Mallis (which, for example, appears to include handwritten reference numerals). Compare Mallis, Fig. 2, with Appeal Br. 9. In the relevant aspects, however, the two versions do not appear to materially differ. 6 Appeal 2016-004536 Application 13/623,905 radial clearance located between the metal to metal seal and a shoulder formed from surfaces 14 and 14 A." Id. With this argument, Appellants do not address the rejection as articulated. Regarding clause d, the Examiner relies on Figure 1 of Mallis, not Figure 2. See Final Act. 5 (providing an annotated version of Figure 1 ), 6 (citing Figure 1); see also Ans. 5-7 (discussing Figure 1). Second, Appellants provide a version of Figure 1 of Mallis 7 and argue that "any alleged gap dimension between surfaces 16 and 16A in Fig. 1 is nowhere discussed within Mallis." Appeal Br. 9-10 (footnote and emphasis omitted). Appellants also argue that Mallis "does not indicate that its figures are to scale, and ' [ w ]hen the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value."' Id. at 9 (quoting Manual of Patent Examining Procedure (MPEP) § 2125). Appellants contend that "the alleged gap dimension between surfaces 16 and 16A in Fig. 1 is, at best, a drawing aberration" for three separate reasons (which we will address below). Id. at 9-10. In the Answer, the Examiner provides the following annotated version of Figure 1 of Mallis: 7 As with Figure 2, the version of Figure 1 provided by Appellants is a more "formal" version of Figure 1 in Mallis (which, for example, appears to include handwritten reference numerals). Compare Mallis, Fig. 1, with Appeal Br. 10. In the relevant aspects, however, the two versions do not appear to materially differ. 7 Appeal 2016-004536 Application 13/623,905 Ans. 5. Mallis discloses that Figure 1 (prior to annotation by the Examiner) "shows a typical prior art two-step threaded coupling for purposes of distinguishing the invention." Mallis 3:2-3. The Examiner added four-digit numbers and arrows to identify various features in Figure 1. For the claim language shown with emphasis in clause d above, the Examiner identifies features 5001 and 5002 as the "first and second radial clearance portions" and identifies feature 1001 as the location of the "fluid tight seal." Ans. 5-6. For completeness, we also provide the original version of Figure 1 of Mallis-i.e., without the Examiner's annotations: 8 Appeal 2016-004536 Application 13/623,905 2 A } A A A II 10 / Box Member IG Pin Member ,. 18 ' 12 Figure 1 3 ___ _,A ..... __ _ r. ~ A A A (qA ( fft(}f: /JRT) Appellants do not dispute that feature 5002 identified by the Examiner is a "radial clearance portion." See Tr. 11: 18-20 (stating that "while the clearance shown between the abutment shoulders 14 and 14 A, and ... the surface ... 16A and 16 ... may qualify as a radial clearance, it's just one"); 13:25-26 (stating that "Mallis only shows at most one radial clearance, and that would be, for example, to the left in the Figure 1 "). Instead, with their second argument, Appellants assert error in the finding that feature 5001 is a "radial clearance portion." For the reasons below, we are not apprised of error in the Examiner's reliance on Figure 1 or in the Examiner's findings regarding feature 5001. Although Appellants are correct that feature 5001 is "nowhere discussed within Mallis" (Appeal Br. 9 (emphasis omitted)), it is not 9 Appeal 2016-004536 Application 13/623,905 improper for an Examiner to rely on a figure to satisfy a limitation, even if the relevant aspect is not addressed in the text of the reference. See In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) ("[A] drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference patent."); see Ans. 7 (stating that "there is no requirement for a prior art reference to set forth, in the specification or the body portion of its document, all that which is shown in the drawings in order for a drawing to be used as prior art, or in making a rejection with such prior art"). Instead, "a drawing is available as a reference for all that it teaches a person of ordinary skill in the art." In re Meng, 492 F.2d 843, 847 (CCPA 1974); see Ans. 7 (stating that "drawings are good for what they show"). Further, although patent drawings not indicated as drawn to scale should generally not be relied on for dimensional measurements (see, e.g., Hockerson-Halberstadt, Inc. v. Avia Grp. Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)), that does not mean "that things patent drawings show clearly are to be disregarded," In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). In the Reply Brief, Appellants discuss the decision in In re Mraz, contending that Figure 1 of Mallis, "especially in view of the drawing quality in Fig. 1 that is ascertainable in a minute region of the reference characters 16A and 16, simply does not 'clearly show' the alleged gap between surfaces 16 and 16A." Reply Br. 4 (quoting MPEP § 2125); id. n.2 (discussing In re Mraz). Here, the preponderance of the evidence supports the Examiner's finding that feature 5001 depicts a "radial clearance portion." We determine that feature 5001 is shown with sufficient particularity to allow reliance on Figure 1. See Mraz, 455 F.2d at 1072 (stating that figures in prior art may be 10 Appeal 2016-004536 Application 13/623,905 relied on for aspects shown with "great particularity"); see also Ans. 7, 8 (stating that "Mallis in Fig. 1 clearly shows a gap between surfaces 16 and 16A at [feature] 5001" and that "the gap illustrated [at feature 5001] in Mallis has nothing to do with the scaling of a drawing, as the gap is a clear feature in the drawing"). Appellants also argue that "factual support does exist for no gap" at feature 5001 because "there are small clearances between surfaces in Fig. 1 that are clearly identified with a clearance 'A' reference character." Reply Br. 4. For the same reasons discussed above, the fact that some "clearance[ s ]" in Figure 1 are identified with reference letters "A" (see Mallis, Fig. 1, 3 :24--27) whereas feature 5001 is not discussed in the text or identified with a reference letter does not undermine the Examiner's reliance on feature 5001. See Aslanian, 590 F.2d at 914; Meng, 492 F.2d at 847. We tum now to the three reasons asserted by Appellants that any clearance shown at feature 5001 is actually a "drawing aberration." See Appeal Br. 9-10. Appellants first contend that Mallis "teaches away from any gap between corresponding surfaces 16A and 16 by stating that ' [ w ]hen the box member 10 and pin member 12 are engaged, the corresponding surfaces 16A, 16 are put into compressive contact to form a metal to metal seal."' Appeal Br. 10 (quoting Mallis 3: 18-20, with emphasis added). The Examiner responds that "Mallis does not teach away from the gap. Mallis indicates that the surfaces 16A and 16 are put into compressive contact to form a seal, and the seal can be seen in the annotated Figure above at 1001." Ans. 8. Appellants have not identified error in ( 1) the Examiner's finding that feature 1001 is the "seal" referenced in the disclosure quoted by Appellants or (2) the finding that feature 1001 is formed at an interface of surfaces 16 11 Appeal 2016-004536 Application 13/623,905 and 16A. We agree with the Examiner's position that surfaces 16 and 16A overall can be in "compressive contact to form a metal to metal seal" (Mallis 3: 18-20) even if portions of the interface between those surfaces-such as at feature 5001-are not in "compressive contact." The fact that the lead lines for surfaces 16 and 16A point directly at feature 5001 does not undermine this view. Cf Tr. 13:20-23 (stating that one of ordinary skill in the art would "clearly understand by looking at [Mallis 3: 18-20] that the portion shown with the leads lines point[ing] to 16 and 16A would be in compressive contact"). Unlike Appellants-who take the position that feature 1001 is not at an interface of surfaces 16 and 16A and that surfaces 16 and 16A are limited to the area near their reference numerals (i.e., near feature 5001) (see Tr. 14:25-15:16}-we agree with the Examiner that surfaces 16 and 16A continue past the end of the lead lines for those reference numerals to form not only feature 5001, but also at least feature 1001 ). See Ans. 8 ("Mallis indicates that the surfaces 16A and 16 are put into compressive contact to form a seal, and the seal can be seen in the annotated Figure above at 1001."). Under this view, feature 1001-as a feature at the interface of surfaces 16 and 16A-provides the "seal" disclosed in the passage highlighted by Appellants. See Mallis 3: 18-20. As the second reason that any clearance shown at feature 5001 is actually a "drawing aberration," Appellants argue that Mallis "makes no distinction between surfaces 16A and 16 in Figs. 1 and 2, and Fig. 2 clearly does not show any gap." Appeal Br. 10. For the same reasons discussed above, the fact that Mallis does not describe feature 5001 in Figure 1 differently than the similar location (near reference numerals 16/16A) in Figure 2 does not undermine the Examiner's reliance on feature 5001 in Figure 1. See Aslanian, 590 F.2d at 914; Meng, 492 F.2d at 847. 12 Appeal 2016-004536 Application 13/623,905 As the third reason, Appellants argue that "Fig. 1 [in Mallis] is labeled as 'Prior Art"' and that "the only prior art reference mentioned in Mallis using a center seal is Blose." Appeal Br. 10 (emphasis omitted); see also Mallis 1: 12-14 and 3:23-27 (discussing U.S. Patent No. 4,662,659 to Blose). According to Appellants, Blose "does not include any gap in the center seal, and at most, includes a single clearance to one side of the center seal (see, e.g., Fig. 3A of Blose)." Appeal Br. 10. The record here does not support Appellants' implicit position that Figure 1 of Mallis reflects the teachings of Blose such that, to the extent feature 5001 (or a similar "clearance") is not present in Blose, feature 5001 should be viewed as a "drawing aberration." Appeal Br. 9. As an initial matter, as noted by the Examiner, Mallis refers to Blose in a discussion of the "positive stop torque shoulder formed from surfaces 14/14A" shown in Figure 1. See Mallis 3:20-24; Ans. 7-8 (stating that "Mallis is relying on Blose ... to illustrate an example of a 'positive stop torque shoulder' (see Mallis, [3 :23-27]) and not a seal"). Moreover, although Appellants are correct that (as noted in the Reply Brief (at 5)) Blose is referenced (along with U.S. Patent No. 4,688,832 to Ortloff) as disclosing "[ e ]xamples of two-step threaded connections" (Mallis 1: 12-14 ), we do not agree that this supports Appellants' implicit position above. For example, in summarizing Figure 1, Mallis does not refer to Blose, but rather states that Figure 1 is "a typical prior art two-step threaded coupling." Mallis 3:2-3. For the reasons above, we sustain the rejection of independent claim 1. Claims 4, 6-13, 15-18, and 20-23 fall with claim 1. 13 Appeal 2016-004536 Application 13/623,905 Rejection 3 Claim 24 depends from claim 1 and further recites that, "in the made- up state, the fluid tight seal formed between the first and second central seal surfaces is the sole fluid tight seal of the threaded tubular connection." Appeal Br. 20 (emphasis added). Claim 25 depends from claim 16 and further recites that, "in the made-up state, the fluid tight seal formed between the seal portions of the tubular male end and the tubular female end is the sole fluid tight seal of the threaded semi-flush connection." Id. (emphasis added). The Examiner acknowledged that Mallis in view of Tung fails to disclose the additional limitations of claims 24 and 25. See Final Act. 22. As to claim 24, the Examiner relied on Figure 1 of Landriault as teaching "that[,] in the made-up state, ... there is a sole fluid tight seal formed between the first and second central seal surfaces of the threaded tubular connection." Id. As to claim 25, the Examiner relied on Figure 1 of Landriault as teaching "that[,] in the made-up state, ... there is a sole fluid tight seal formed between the seal portions of the tubular male end and the tubular female end." Id. at 23. Appellants address both claims together, arguing that Landriault "fails to teach or suggest a center seal that is the sole fluid tight seal of the threaded tubular connection" because "the connection of Landriault ... includes multiple sealing surfaces." Appeal Br. 13 (citing Landriault 3 :21- 25, 3:66-4:1). The Examiner responds that "Landriault illustrates a central seal at elements 18 and 19 (see Fig. 1 ), which is a sole (only one) seal that is centrally located." Ans. 11-12. In addition, the Examiner states that "the 14 Appeal 2016-004536 Application 13/623,905 particular claim as a whole does not preclude other seals, the particular claim as a whole just recites a sole seal in the general location." See id. at 12. We disagree with the Examiner's position as to the requirements of claims 24 and 25. The preambles of claims 1 and 16 (from which claims 24 and 25 depend) recite a "threaded tubular connection" and a "threaded semi- flush connection" respectively. See Appeal Br. 15, 18 (Claims App.). That language, in conjunction with the language in claims 24 and 25 shown with emphasis above, requires that the "fluid tight seal" recited in claims 24 and 25 is the "sole fluid tight seal" in the entire "connection." See Reply Br. 6 (noting that the claim language in claims 24 and 25 shown with emphasis above "do[ es] not just recite a sole seal in a 'general location' as asserted at page 12 of the Examiner's Answer"). Here, the Examiner has not identified a teaching in the prior art that sufficiently addresses the additional limitations of claims 24 and 25. For these reasons, we do not sustain the rejection of claims 24 and 25. DECISION We do not reach the decision to provisionally reject claims 1, 4, 6-13, 15-18, and 20-25 on the ground of nonstatutory double patenting, we affirm the decision to reject claims 1, 4, 6-13, 15-18, and 20-23 under 35 U.S.C. § 103(a), and we reverse the decision to reject claims 24 and 25 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 15 Copy with citationCopy as parenthetical citation