Ex Parte Jones et al

Board of Patent Appeals and Interferences

Sep 24, 2007

10420303 (B.P.A.I. Sep. 24, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN JONES, GREG OLIN, SEBASTIAN WOLTERS,
JESSE CONSTANTINE, and DAVID BILBERRY
____________

Appeal 2007-0050
Application 10/420,303
Technology Center 3600
____________

Decided: September 24, 2007
____________

Before LINDA E. HORNER, ANTON W. FETTING, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kevin Jones et al. (Appellants) seek our review under 35 U.S.C. § 134 of the
final rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellants’ claimed invention is to a multiple zone downhole intelligent
flow control valve system and method for controlling commingling of flows from
multiple zones (Specification 2: ¶¶0007, 0010). Claims 1 and 13, reproduced
below, are representative of the subject matter on appeal.

1. A production control system comprising:
a series of nested tubular members wherein at least
one axial flow channel and at least two annular flow
channels are formed; and
at least one valve configured and positioned
downhole to control flow from each said flow channel.

13. A method for controlling commingling of flows
from multiple zones comprising:
physically containing flows from different zones to
individual concentric flow channels in a nested tubular
arrangement; and
selectively commingling one or more of the flows
by setting at least one variably actuatable downhole valve
associated with each flow.

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THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Tubel US 5,597,042 Jan. 28, 1997
Patel ‘298 US 6,227,298 B1 May 8, 2001
Patel ‘216 US 6,302,216 B1 Oct. 16, 2001
The following rejections are before us for review:
1. Claims 1-3, 7, 13, and 15 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Patel ‘298.
2. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Patel ‘298 and Patel ‘216.
3. Claims 5, 6, 8-12, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Patel ‘298 and Tubel.

ISSUE
The Appellants contend that claims 1 and 3-12 are patentable because
“[t]here is no enabling teaching in [Patel ‘298] of [two annular flow channels
formed by nested tubular members]” as recited in claim 1 (Appeal Br. 5-6). The
Appellants further contend that claim 13 is patentable because “there is absolutely
no teaching regarding commingling of fluid in the [Patel] ‘298 reference” and the
valves of the prior art are not variably actuatable (Appeal Br. 8). The Appellants
further contend that claim 15 is separately patentable because “there is no
automatic control of valves in the [Patel ‘298] reference for any reason at all let
alone the specifically claimed ‘maintenance of a desired condition’” (Id.).
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The Examiner found that Patel ‘298 teaches a series of nested tubular
members 172 and 174 that form an axial flow channel 178 and an annular flow
channel 180, and that although Patel ‘298 “does not expressly teach at least two
annular flow channels formed by the nested tubular members,” Patel ‘298 discloses
“that the formation isolation system could be used with more than two zones
(col. 2, line[s] 22-27)” (Answer 3). The Examiner further found that the use of the
word “selectively” in claim 13 indicates that the step of commingling one or more
of the flows is not required as one could choose not to commingle the flows, and
regardless, Patel ‘298 allows the flow from one zone to flow to the surface and the
claim language requires the “commingling” of only one flow (Answer 4). The
Examiner further found that the method of Patel ‘298 involves automatically
controlling at least one valve to maintain a desired condition (i.e., either an open or
closed condition) (Id., citing Patel ‘298, col. 2, ll. 28-46 and col. 6, ll. 24-27).
The issue before us is whether the Appellants have shown that the Examiner
erred in rejecting claims 1-3, 7, 13, and 15 as anticipated by Patel ‘298.1 This
issue turns on whether Patel ‘298 discloses:
1) “a series of nested tubular members wherein at least one axial flow
channel and at least two annular flow channels are formed” (claim 1);
2) “selectively commingling one or more of the flows by setting at least
one variably actuatable downhole valve associated with each flow” (claim 13); and

1 The Appellants do not separately argue the obviousness rejections of claims 4-6,
8-12, and 14, but rely instead on their arguments for patentability of independent
claims 1 and 13 (Appeal Br. 9). As such, these rejections will be treated with the
anticipation rejection.
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3) “automatically controlling said at least one valve to maintain a desired
condition” (claim 15).

FINDINGS OF FACT
We find that the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427, 7
USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary standard
for proceedings before the Office).
1. Patel ‘298 discloses that “[i]n a wellbore, one or more valves may be
used to control flow of fluid between different sections of the wellbore.”
(Patel ‘298, col. 1, ll. 9-10).
2. Patel ‘298 discloses:
In wells with multiple completion zones, valves are also
used to isolate the different zones. Typically during
completion of multiple zone wells, a first zone is
perforated using a perforating string to achieve
communication between the wellbore and adjacent
formation and the zone may be subsequently completed.
If completion of a second zone is desired, a valve may be
used to isolate the first zone while the second zone
completion operation proceeds. Additional valves may
be positioned in the wellbore to selectively isolate one or
more of the multiple zones.
(Patel ‘298, col. 1, ll. 16-25).
3. Patel ‘298 discloses a valve assembly for use in a well where a first valve
controls fluid flow from a first portion of the well to a first fluid path, and
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a second valve controls fluid flow from a second portion of the well to a
second fluid path (Patel ‘298, col. 1, ll. 55-60).
4. In particular, Patel ‘298 discloses a formation isolation system 18
including multiple fluid paths 178 and 180, one each for a corresponding
zone, where flow control of the different fluid paths 178 and 180 are
accomplished using a multivalve isolation assembly 190. The assembly
190 includes a ball valve 116 to control fluid flow from a first zone 20 to
first fluid path 178, and a sleeve valve 114 to control fluid flow from a
second zone 22 to second fluid path 180. (Patel ‘298, col. 3, ll. 3-14.) As
such, Patel ‘298 does not depict in its figures a flow control system
having two annular flow channels formed by nested tubular members.
5. Patel ‘298 discloses that a flow tube 172 extends from below the
assembly 190 to near a ball valve 120 above the first zone 20 to provide a
sealed path from the first zone 20 to the flow control device 100, and a
second flow tube 174 extends from above the ball valve 116 to the flow
control device 100, such that an annular space 176 between the flow tube
174 and the inner wall of the wellbore 12 forms part of the second fluid
path 180, through which fluid form the second zone 22 flows when the
sleeve valve 114 is open (Patel ‘298, col. 3, ll. 51-65).
6. Patel ‘298 discloses that “[t]he formation isolation system according to
further embodiments may include multiple valves for use with more than
two zones” (Patel ‘298, col. 2, ll. 24-26). Patel ‘298 further discloses that
“[a]lthough the illustrated embodiments refer to two zones and two
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valves in the multivalve assembly 190, other embodiments may include a
greater number of valves for use with a corresponding number of zones”
(Patel ‘298, col. 4, ll. 12-15). Patel ‘298 does not, however, provide any
specific direction or guidance on how to extend the preferred
embodiment disclosed in the figures to a wellbore having more than two
production zones. Patel ‘298 further does not provide any direction or
guidance on using nested tubular members to create two annular flow
channels in a multi-zone embodiment.
7. The flow control system 100 of Patel ‘298 may include an intelligent
flow control valve and further includes two valve sections 102 and 104.
Valve section 104 includes ports 108 to allow fluid to flow from a first
wellbore section 110 in communication with the first zone 20. Valve
section 102 includes ports 106 to allow fluid to flow from a second
wellbore section 112 in fluid communication with the second zone 22.
(Patel ‘298, col. 3, ll. 15-24.)
8. “The valves 114 and 116 are actuable between open and close positions
to allow fluid from the zones 20 and 22 to flow through the fluid paths
178 and 180 to the flow control device 100, which can activate one of the
valve sections 102 and 104 to select which of zones 20 and 22 to flow to
the surface. The valve sections 102 and 104 in the flow control device
100 can independently be closed and opened to control fluid flow from
the zones 20 and 22.” (Patel ‘298, col. 3, ll. 29-36.)
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9. Patel ‘298 discloses that the valves may be opened and closed multiple
times with a shifting tool (Patel ‘298, col. 3, ll. 1-2).
10. The customary and ordinary meaning of “variable” is “Likely to change
or vary; subject to variation; changeable.” The American Heritage
Dictionary of the English Language (4th ed. 2000), available at
www.bartelby.com.
11. The customary and ordinary meaning of “actuate” is “1. To put into
motion or action; activate.” The American Heritage Dictionary of the
English Language (4th ed. 2000), available at www.bartelby.com.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
“To serve as an anticipating reference, the reference must enable that which it is
asserted to anticipate.” Elan Pharmaceuticals, Inc. v. Mayo Found. For Med.
Educ. & Research, 346 F.3d 1051, 1054, 68 USPQ2d 1373, 1375 (Fed. Cir. 2003).
“Enablement requires that ‘the prior art reference must teach one of ordinary skill
in the art to make or carry out the claimed invention without undue
experimentation.’” Id. at 1054, 68 USPQ2d at 1376 (quoting Minnesota Mining
and Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301, 64 USPQ2d 1270, 1278
(Fed. Cir. 2002) and citing Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362,
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1369, 52 USPQ2d 1129, 1134 (Fed. Cir. 1999)).
To evaluate whether a disclosure would require undue experimentation, the
Federal Circuit has adopted the following factors to be considered:
(1) The quantity of experimentation needed to make or use the invention
based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
(4) The nature of the invention;
(5) The state of the prior art;
(6) The relative skill of those in the art;
(7) The level of predictability in the art; and
(8) The breadth of the claims.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). “The
disclosure in an assertedly anticipating reference must be adequate to enable
possession of the desired subject matter. It is insufficient to name or describe the
desired subject matter, if it cannot be produced without undue experimentation.”
Elan Pharmaceuticals, 346 F.3d at 1055, 68 USPQ2d at 1376. “It is well settled
that prior art under 35 U.S.C. §102(b) must sufficiently describe the claimed
invention to have placed the public in possession of it. Such possession is effected
if one of ordinary skill in the art could have combined the publication’s description
of the invention with his own knowledge to make the claimed invention.” In re
Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed. Cir. 1985).
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“The determination of what level of experimentation is ‘undue,’ so as to
render a disclosure non-enabling, is made from the viewpoint of persons
experienced in the field of the invention.” Elan Pharmaceuticals, 346 F.3d at
1055, 68 USPQ2d at 1376 (citation omitted). “The determination of what
constitutes undue experimentation in a given case requires the application of a
standard of reasonableness, having due regard for the nature of the invention and
the state of the art.” In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404.

ANALYSIS
The Appellants contend that claims 1 and 3-12 are patentable because
“[t]here is no enabling teaching in [Patel ‘298] of [two annular flow channels
formed by nested tubular members]” as recited in claim 1 (Appeal Br. 5-6). We
select claim 1 as the representative claim, and claims 3-12 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
Patel ‘298 does not depict in its figures a flow control system having two
annular flow channels formed by nested tubular members as recited in claim 1
(Finding of Fact 4). Rather, the embodiment depicted in the figures shows a single
annular flow channel formed by concentric tubular members and two valves used
to control flow from two zones (Findings of Fact 3-5). Patel ‘298 does, however,
describe an alternate embodiment in which multiple valves are used to control flow
for more than just two zones (Finding of Fact 6).
The Appellants contend that the disclosure in Patel ‘298 of this alternate
embodiment is not enabled, and thus is not proper prior art against claim 1 (Appeal
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Br. 6-7). We consider the factors enumerated in Wands, 858 F.2d at 737,
8 USPQ2d at 1404, to determine whether the disclosure in Patel ‘298 is enabling of
the invention of claim 1. Although Patel ‘298 provides detailed guidance on how
to make and use the preferred embodiment shown in the figures, it does not
provide any specific direction or guidance on how to extend this preferred
embodiment to a wellbore having more than two production zones (Finding of
Fact 6). Patel ‘298 certainly does not provide any direction or guidance on using
nested tubular members to create two annular flow channels in a multi-zone
embodiment as recited in claim 1 (Finding of Fact 6).
Further, claim 1 does not simply claim implementing a production control
system for more than two production zones. Rather, claim 1 narrowly recites the
particular way in which a multi-zone production control system is implemented,
viz, using a series of nested tubular members having at least one axial flow channel
and at least two annular flow channels. The Appellants have presented arguments
that one having ordinary skill in the art would not know how to build the further
embodiments of Patel ‘298 for more than two zones and that alternatives to the use
of at least two annular flow channels exist, such as stacking several of the devices
one on top of each other (Appeal Br. 6). We agree with the Appellants that “there
simply is no teaching in [Patel ‘298] that additional annular flow passages are
contemplated in the embodiments discussed” (Appeal Br. 7).
The Examiner found that Patel ‘298 “shed[s] light on how the system would
be arranged to allow fluid to be produced from more than two zones” (Answer 7).
Although, the passages relied on by the Examiner discuss that each zone must
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include its own corresponding flow path and that these flow paths would include
valves similar to those used in flow paths 178 and 180, Patel ‘298 does not provide
any direction or guidance on how these additional corresponding flow paths would
be formed in the system of Patel ‘298. Specifically, Patel ‘298 does not provide
any disclosure that would have enabled one skilled in the art to make and use its
system with nested tubular members to create at least two annular flow channels.
The Examiner attempts to show how one of ordinary skill in the art would perceive
the system of Patel ‘298 being used for more than a dual-zone wellbore (Answer 8
and Appendix A). As the Appellants noted in the Reply Brief, the Examiner, in
order to make this alternate embodiment, has had to change the original design of
the system from Figure 1 of Patel ‘298 (Reply Br. 3). In particular, the Examiner’s
embodiment of Appendix A completely redefines the shorter innermost tubular
member 174 of Patel ‘298 so that it is longer than the outer tubular members. It
appears that the Examiner uses the direction and guidance of Appellants’ own
disclosure to arrive at this alternate embodiment since Patel ‘298 contains no
teaching to make such a modification to the tubular members of Figure 1 (Reply
Br. 4). As such, we find that the disclosure in Patel ‘298 does not enable the
subject matter of claim 1 because undue experimentation would be required to
make and use the system of Patel ‘298 in a multi-zone environment in the way
recited in claim 1. Accordingly, we do not sustain the rejection of claim 1, or its
dependent claims 3 and 7, as anticipated by Patel ‘298.2

2 We remind the Examiner that “a non-enabling reference may qualify as prior art
for the purpose of determining obviousness under 35 U.S.C. § 103.” Symbol
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The Appellants further contend that claim 2 is separately patentable because
“there is no teaching within [Patel ‘298] of variability of the valves” (Appeal
Br. 8). We do not need to reach this argument for claim 2, because claim 2
depends from and includes all of the limitations of claim 1. As such, the rejection
of claim 2 as anticipated by Patel ‘298 is not sustained as to claim 2 for the same
reasons as claim 1.
The Examiner rejected claims 4-6 and 8-12 as unpatentable over Patel ‘298
in combination with Patel ‘216 (claim 4) or Tubel (claims 5, 6 and 8-12). The
Examiner relies on Patel ‘216 to teach “selectively allowing the fluid from multiple
formations to commingle” (Answer 5) and does not rely on Patel ‘216 to cure the
deficiency of Patel ‘298. Similarly, the Examiner relies on Tubel to teach “the
valve being controlled by a downhole controller based on parameters measured by
a sensor (Answer 5) and does not rely on Tubel to cure the deficiency of Patel
‘298. As such, neither Patel ‘216 nor Tubel is relied on to show using a series of
nested tubular members to form at least one axial flow channel and at least two
annular flow channels, as recited in claim 1, and the Examiner has thus failed to set
forth a prima facie case of obviousness. Accordingly, we do not sustain the
rejection of claim 4 as unpatentable over Patel ‘298 and Patel ‘216, and we do not
sustain the rejection of claims 5, 6, and 8-12 as unpatentable over Patel ‘298 and
Tubel.

Techs. Inc. v. Opticon Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247 (Fed.
Cir. 1991).
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The Appellants further contend that claim 13 is separately patentable
because “there is absolutely no teaching regarding commingling of fluid in the
[Patel] ‘298 reference” (Id.). Claim 13 recites the step of “selectively
commingling one or more of the flows by setting at least one variably actuatable
downhole valve associated with each flow” (emphasis added). We agree with the
Examiner that the language of claim 13 is broad enough to cover commingling of a
single flow (Answer 4), and as such Patel ‘298 teaches the method step as claimed.
In particular, Patel ‘298 discloses a multivalve isolation assembly 190 including a
ball valve 16 to control fluid flow from a first zone 20 to first fluid path 178, and a
sleeve valve 114 to control fluid flow from a second zone 22 to second fluid path
180 (Finding of Fact 4). Patel teaches that these valves 114 and 116 are used to
isolate the zones from each other during operation (Finding of Fact 2). Although
Patel ‘298 does not teach commingling of fluids from multiple zones, claim 13
does not require such commingling. Rather, claim 13 requires selectively
commingling one or more of the flows from different zones. Because Patel ‘298
isolates the flows from the different zones, it allows commingling of one flow from
one zone as it travels through its corresponding fluid path. As such, the Appellants
have not persuaded us of error in the Examiner’s rejection of claim 13 as
anticipated by Patel ‘298.
The Appellants further argue that Patel ‘298 “teaches only open or closed
valves” and thus “[t]here is no variability taught in [Patel ‘298]” (Appeal Br. 8).
We agree with the Examiner’s finding that Patel ‘298 discloses the valves are
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variably actuatable, “i.e., able to be opened and closed multiple times (col. 3, lines
1 and 2)” (Id.) (Findings of Fact 8, 9).
During examination of a patent application, pending claims are given their
broadest reasonable construction consistent with the specification. In re Prater,
415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969); In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004).
Although a patent applicant is entitled to be his or her own lexicographer of patent
claim terms, in ex parte prosecution it must be within limits. In re Corr, 347 F.2d
578, 580, 146 USPQ 69, 70 (CCPA 1965). The applicant must do so by placing
such definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
construed. See also In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674
(Fed. Cir. 1994) (although an inventor is free to define the specific terms used to
describe the invention, this must be done with reasonable clarity, deliberateness,
and precision; where an inventor chooses to give terms uncommon meanings, the
inventor must set out any uncommon definition in some manner within the patent
disclosure so as to give one of ordinary skill in the art notice of the change).
The Appellants’ Specification does not provide a definition of the phrase
“variably actuatable.” The customary and ordinary meaning of “variable” is
“Likely to change or vary; subject to variation; changeable” (Finding of Fact 10).
The customary and ordinary meaning of “actuate” is “[T]o put into motion or
action; activate” (Finding of Fact 11). As such, the “variably actuatable downhole
valve” of claim 13, when given its broadest reasonable interpretation, refers to a
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valve that can be put into motion to change from a first position to a second
position.
The Appellants cite to the disclosure in paragraph 12 of the Specification in
support of their interpretation of “variably actuatable” as requiring “more than
simply the positions of opened and closed” (Reply Br. 4-5). Paragraph 12,
however, does not support such a definition. Rather, the last sentence of paragraph
12 refers to one particular embodiment of the invention that uses programmed
controllers and pressure sensors to effectuate pressure biases between the zones
(Specification 4:¶0012). Claim 13 is not limited, however, to such an embodiment.
Rather, claim 13 recites only a method for controlling commingling of flows. We
must be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the embodiment.
See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69
USPQ2d 1865, 1868 (Fed. Cir. 2004) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the claim. For
example, a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the embodiment.”) The
challenge is to interpret claims in view of the specification without unnecessarily
importing limitations from the specification into the claims. See E-Pass Techs.,
Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir.
2003).
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The Appellants further point to their original claim 13, which recites
“selectively commingling one or more of the flows by setting at least one valve
associated with each flow channel to one of a closed position and an infinite
number of flow capable positions,” as support for their proffered definition of
“variably actuatable” (Reply Br. 5). Although we agree that this original claim
language describes something more than a valve that moves between a single open
position and a closed position, the language regarding “an infinite number of flow
capable positions” from original claim 13 is not found in the amended claim 13
currently before us. Further, original claim 13 does not use the phrase “variably
actuatable” and thus does not so define this phrase to be limited to a valve that
operates between a closed position and an infinite number of flow capable
positions. It is the Appellants’ burden to precisely define the invention, not the
PTO’s. In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir.
1997). Appellants always have the opportunity to amend the claims during
prosecution, and broad interpretation by the examiner reduces the possibility that
the claim, once issued, will be interpreted more broadly than is justified. In re
Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
The Appellants have not persuaded us of error in the Examiner’s
interpretation of variably actuatable to include prior art valves which can be put
into motion to change between a closed position and an open position to allow
commingling of the flow via the open valve, as taught in Patel ‘298 (Findings of
Fact 8, 9). Accordingly, we sustain the rejection of claim 13 as anticipated by
Patel ‘298. The Appellants fail to present any arguments for separately
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patentability of dependent claim 14. As such, claim 14 falls for the same reasons
as claim 13.
The Appellants further contend that claim 15 is separately patentable
because “there is no automatic control of valves in the [Patel ‘298] reference for
any reason at all let alone the specifically claimed ‘maintenance of a desired
condition’” (Id.). The Examiner found that the method of Patel ‘298 involves
automatically controlling at least one valve to maintain a desired condition (i.e.,
either an open or closed condition) (Id., citing Patel ‘298, col. 2, ll. 28-46 and col.
6, ll. 24-27). The Appellants responded that one of ordinary skill in the art would
understand the phrase “desired condition” to refer to a condition of flow rather than
valve position (Reply Br. 5). We disagree. Claim 15 recites, “A method for
controlling commingling of flows from multiple zones as claimed in claim 13
wherein said method further comprises automatically controlling said at least one
valve to maintain a desired condition.” The plain language of the claim is not
specific as to whether the recited “desired condition” refers to the condition of the
valve or the condition of the flow. The Appellants further fail to point to any
specific portion of their Specification that would lead one of ordinary skill in the
art to definitively understand the claimed “desired condition” to refer to flow. As
such, the Appellants have failed to persuade us that the Examiner’s interpretation
of the claimed “desired condition” to be broad enough to encompass flow is
unreasonable. As such, we sustain the Examiner’s rejection of claim 15 as
anticipated by Patel ‘298.

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CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred in
rejecting claims 1-3 and 7 as anticipated by Patel ‘298, claim 4 as unpatentable
over Patel ‘298 and Patel ‘216, and claims 5, 6, and 8-12 as unpatentable over
Patel ‘298 and Tubel. We further conclude that the Appellants have failed to show
that the Examiner erred in rejecting claims 13 and 15 as anticipated by Patel ‘298
and claim 14 as unpatentable over Patel ‘298 and Tubel.

DECISION
The decision of the Examiner to reject claims 1-12 is reversed and the
decision of the Examiner to reject claims 13-15 is affirmed.
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)(1)(iv) (2006).

AFFIRMED-IN-PART

jlb

KEITH J. MURPHY
CANTOR COLBURN LLP
55 GRIFFIN ROAD SOUTH
BLOOMFIELD CT 06002