Ex Parte Harper et al

Patent Trial and Appeal Board

Nov 29, 2018

14487812 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/487,812 09/16/2014 Jason M. Harper
44639 7590 12/03/2018
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
20 Church Street
22nd Floor
Hartford, CT 06103
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.
PRF4-57947-US-NP 1338
EXAMINER
RUNYAN, RONALD R
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON M. HARPER, JAMES G. KING, and
JAMES SCOTT SANCHEZ
Appeal 2018-003173
Application 14/487 ,812
Technology Center 3600
Before BRETT C. MARTIN, JILL D. HILL, and BRENT M. DOUGAL,
Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-003173
Application 14/487,812
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § I34(a) from the Examiner's
rejection of claims 15-17, which constitute all the claims pending in this
application. Claims 1-14 were canceled during prosecution. App. Br. 8.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants' claims are directed generally to a "tubular assembly
including a sliding sleeve having a degradable locking element." Title.
Claim 15, reproduced below, is illustrative of the claimed subject matter:
15. A method of operating a downhole slidable sleeve
compnsmg:
running a tubular assembly including at least one tubular
having one or more openings into a wellbore;
shifting a slidable sleeve carried by the at least one tubular
from a first configuration to a second configuration;
locking the slidable sleeve in the second configuration
with a degradable locking member after the slidable sleeve is
shifted from the first configuration; and
exposing the degradable locking member to a downhole
fluid causing the degradable locking member to degrade.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jessup et al. ("Jessup")
Badalamenti et al.
("Badalamenti")
us 3,970,147
US 2006/0042798 Al
2
July 20, 197 6
Mar. 2, 2006
Appeal 2018-003173
Application 14/487,812
REJECTION
The Examiner made the following rejection:
Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jessup and Badalamenti. Final Act. 3.
ANALYSIS
Appellants argue that the Examiner's combination of Jessup and
Badalamenti is improper because Jessup teaches away from the proposed
combination by stating that "[i]t would be a most disagreeable task to have
to separate thousands of feet of pipe sections full of well fluids due to the
absence of a properly functioning reverse circulation valve capable of
allowing the fluids to 'dump' into the well." See, e.g., App. Br. 5 (citing
Jessup col. 1, 11. 33-37). In the Examiner's proposed combination, the
addition of a degradable locking member would create just such an
"[im]properly functioning reverse circulation valve." We agree with
Appellants that this amounts to a clear teaching away from the Examiner's
combination.
Faced with this teaching away, the Examiner, as Appellants point out,
provides "a number of arguments regarding why it might be obvious to form
a locking ring from a degradable material, but has not disclosed why one of
ordinary skill in the art would be motivated to do so in the case of Jessup."
Reply Br. 2. We further agree with Appellants that "[t]he Examiner has not
provided any argument, evidence or rational[ e] to support that one of
ordinary skill would consider it obvious to allow the valve in Jessup et al. to
move to a closed configuration following a circulation procedure." Reply
3
Appeal 2018-003173
Application 14/487,812
Br. 3. Absent some evidence showing that Jessup could be used in other
manners that would not implicate the teaching away, beyond the mere
speculation provided by the Examiner, we cannot sustain the rejection.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 15-1 7.
REVERSED
4