Ex Parte Kotrla et al

Board of Patent Appeals and Interferences

Jan 11, 2010

10304240 (B.P.A.I. Jan. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHNNIE E. KOTRLA and JOE S. JOHNSON
____________

Appeal 2009-000558
Application 10/304,240
Technology Center 3600
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Decided: January 11, 2010
____________

Before JENNIFER D. BAHR, MICHAEL W. O’NEILL, and STEFAN
STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Johnnie E. Kotrla and Joe S. Johnson (Appellants) seek our review
under 35 U.S.C. § 134 of the final rejection of claims 1, 3-9, and 15-18.
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Appellants canceled claims 2 and 10-14. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
The Invention
The claimed invention is to a subsea connection for connecting a
surface blowout preventer stack and riser to a subsea wellhead; in particular,
to using a single cavity blowout preventer with a set of shearing blind rams.
Spec. 1, para. [0001].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
A subsea connection apparatus for
connecting a surface blowout preventer stack and
riser to a subsea wellhead of a well bore,
comprising:
a blowout preventer locatable subsea and
comprising a ram cavity containing a pair of
opposing shearing blind rams;
a first connector extending from the blowout
preventer for selectively sealingly engaging the
riser, the riser being connected to the surface
blowout preventer stack and terminating in the first
connector when connected to the first connector;
a second connector extending from the
blowout preventer for selectively sealingly
engaging the subsea wellhead;
a subsea control system operably connected
with the blowout preventer and the first and second
connectors; and,
the riser being selectably disconnectable and
reconnectable with the subsea wellhead, both with
and without the blowout preventer, while
controlling well bore pressure without requiring
the use of choke and kill lines.

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The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Addison US 3,716,068 Feb. 13, 1973
Steddum US 4,193,455 Mar. 18, 1980
Møksvold US 5,848,656 Dec. 15, 1998

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 3 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Møksvold in view of Steddum.
Claims 4-9 and 16-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Møksvold in view of Steddum, as applied to claims 3 and
15 above, and further in view of Addison.

Contentions
Appellants contend that the scope and content of the prior art and the
claimed subject matter differ. In particular, Appellants contend that the
combination of Møksvold and Steddum fails to teach, or render obvious, a
subsea control system, a blowout preventer (BOP) that engages the riser, and
pressure control without choke and kill lines as the claimed subject matter
recites. App. Br. 6-8 and Reply Br. 5-6. Appellants contend further there is
no motivation to combine the references. App. Br. 9 and Reply Br. 6.

SUMMARY OF DECISION
We AFFIRM.

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OPINION
Issues
The issues before us are as follows:
(1) Have Appellants shown the Examiner erred in concluding that
Møksvold and Steddum fail to render obvious the claimed subject
matter as a whole because, even if Møksvold and Steddum were
combined, a subsea control system, a BOP that engages the riser,
and pressure control without choke and kill lines, as claimed,
would not result?
(2) Have Appellants shown the Examiner erred in concluding that
Møksvold and Steddum fail to render obvious the claimed subject
matter as a whole because motivation for combining Møksvold and
Steddum needs to be shown to establish obviousness?
Principles of Law
A claim is unpatentable under 35 U.S.C. § 103(a) if “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 406-07 (2007)(“While the sequence of these questions might be
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reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”).
Analysis
Issue (1)
Subsea Control System
The claimed subject matter of “subsea control system operably
connected with the blowout preventer and the first and second connectors” is
rendered obvious by the combination of Møksvold and Steddum.
Appellants’ argument attacking the Examiner’s finding with respect to
Møksvold’s hydraulic control unit located at the surface with its controls
lines running down to the subsea BOP, by analogy to the statement that a
power generator located onshore “does not become a subsea power
generator simply because the output power cable [is] under the sea’s
surface” (Reply Br. 5), is unconvincing. The analogy is a slight hyperbole.
Further, Appellants’ arguments in the briefs are based on a narrow claim
construction of the “subsea control system operably connected with the
blowout preventer and the first and second connectors” that is limited to a
particular embodiment appearing in the written description. 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 (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
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than the embodiment.”) Our 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 (Fed. Cir. 2003).
Nothing in the claim limits the control system to be physically
underwater. In other words, the term “subsea” when joined with “control
system” is not further limited in structure or function to require the control
system itself to be underwater. In the context of the claim, “subsea” is
merely a label. In other words, a control system for controlling subsea
operations, such as a control system operably connected to a BOP located
subsea, is a “subsea control system.” More specifically, what the claim
limitation at issue requires is a control system “operably connected” to the
blowout preventer, the first connector, and the second connector.
Møksvold’s hydraulic unit, as shown in Figure 1B, is connected to the
subsea BOP. Steddum’s control means at the surface is connected to the
hydraulic connectors 40 and 42. Steddum, col. 4, ll. 3-7. Therefore, the
prior art, at least, describes in separate references a control system
operatively connected to a subsea BOP and a control system connected to
hydraulic connectors.
The next question is whether the claim limitation at issue is rendered
obvious by the combined teachings of the references. The Supreme Court
stated that nothing has disturbed the “Court’s earlier instructions concerning
the need for caution in granting a patent based on the combination of
element found in the prior art.” KSR Int’l, 550 U.S. at 415. And citing to its
decision in Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340
U.S. 147, 152 (1950), the Court stated that “[t]he combination of familiar
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elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l, 550 U.S. at 416.
In this case, the prior art (Møksvold) describes a control system
connected to a subsea BOP. As such, this control system is “operably
connected” to the BOP. The prior art (Steddum) describes a control system
connected to a pair (first and second) of hydraulic connectors located on the
top and bottom of a subsea BOP. As such, this control system is “operably
connected” to the first and second hydraulic connectors positioned above
and below the BOP. See e.g. Steddum, col. 3, ll. 31-34 and 61-64, and
Figure 2, reference numerals 42 and 40 respectfully. Accordingly,
combining the above-mentioned features of both references would yield a
control system that is operably connected to both the subsea BOP and the
first and second connectors, as called for in the claim. Nothing in the record
demonstrates more than a predictable result from combining the connection
arrangement described by Steddum for connecting the hydraulic control
system of Møksvold to the BOP, thereby yielding a control system
connected both to the the subsea BOP and the first and second hydraulic
connectors. The combination appears to be nothing more than the
predictable use of prior art elements according to their established functions.
See KSR Int’l, 550 U.S. at 417. Therefore, the limitation of the “subsea
control system operably connected with the blowout preventer and the first
and second connectors” is rendered obvious by the combined content of
Møksvold and Steddum.
BOP engaging the riser
The Examiner found that the claim limitation of “a first connector
extending from the blowout preventer for selectively sealingly engaging the
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riser” is met by Møksvold’s emergency quick disconnect connector 9. As
the Examiner stated, Møksvold “discloses a first connector which is the
mating piece that fits into [the] emergency quick connector (9).” Ans. 4.
We understand this finding to mean that the Examiner considers the
limitation of the “first connector” as being met by a structure that consists of
the mating piece (connector) that extends upwardly from the BOP and mates
with the emergency quick disconnect connector 9. In other words, the quick
disconnect connection comprises two portions, viz., an emergency quick
connector and its mating piece. This combination is clearly shown in a
portion of Figure 1B that verbally and visually identifies the emergency
quick disconnect connector.
Reproduced below is an annotated version of this portion of Figure 1B.

A portion of Figure 1B depicting the emergency quick
disconnect connector 9 and an annotated mating piece.

One of ordinary skill in the art understands that any quick disconnect
connection has two portions, viz., a male and a female. From the Examiner’s
findings, it is clear that the Examiner considers the “mating piece” that “fits
into the emergency quick connector (9)” to be the male portion of the
connection and the “emergency quick connector (9)” to be the female
portion. The Examiner further found that the mating piece is connected to
the subsea BOP and thus is considered extending from the subsea BOP.
Ans. 4. That finding is sound. As seen from the annotated portion of Figure
1B supra, the mating piece extends from the top of the subsea BOP 1.
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Further, that mating piece sealingly engages the riser 3, via the emergency
quick disconnect connector 9 provided on the riser. Appellants’ arguments
against the Examiner’s findings overlook the fact that the quick disconnect
connection between the riser 3 and BOP is effected by means of two
connectors, one extending from the riser 3 and the other extending from the
BOP.
Pressure control without choke and kill lines
Appellants’ argument that neither Møksvold nor Steddum teaches
pressure control without the use of choke and kill lines is unconvincing as to
showing error on the Examiner’s part when Møksvold clearly discloses that
the purpose of the invention is to avoid the use of choke and kill lines.
Møksvold, Abstract. Accordingly, we find this limitation fully described by
Møksvold’s statement of purpose of the invention.
Issue (2)
Rigid application of a “teaching, suggestion, motivation” test for
nonobviousness is incompatible with Supreme Court precedent. KSR Int’l,
550 U.S. at 419. The Examiner thus need not establish the existence of a
teaching, suggestion, and motivation in combining teachings from prior art
references, rather, the Examiner must provide an articulated reasoning with
some rational underpinning to support a legal conclusion of obviousness. In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The analysis need not seek out
precise teachings directed to the specific subject matter of the claim but can
take into account the inferences and the creative steps that a person of
ordinary skill in the art would employ. KSR Int’l, 550 U.S. at 418. In this
case, the Examiner reasoned a person of ordinary skill in the art would find
it advantageous to operate the connectors attached to a subsea BOP from a
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remote location. Final Rejection 3. We find the Examiner’s reasoning has a
rational underpinning, viz., persons skilled in the art would want control of
subsea equipment fathoms deep, to support the legal conclusion of
obviousness.
§ 103 Rejection based on Møksvold, Steddum, and Addison
Appellants rely on their arguments for patentability of claims 1, 3,
and 15 for the rejection of claims 4-9 and 16-18. Given those arguments are
unconvincing, they are likewise unconvincing with respect to the rejection of
claims 4-9 and 16-18 based on Møksvold, Steddum, and Addison.

CONCLUSIONS OF LAW
We conclude that Appellants have failed to demonstrate that, even if
Møksvold and Steddum were combined, a subsea control system, a BOP that
engages the riser, and pressure control without choke and kill lines, as
claimed, would not result. We conclude that the Examiner’s articulated
reason to combine the prior art has a rational underpinning. Therefore, we
conclude that Appellants have failed to demonstrate that the claimed subject
matter as a whole is rendered obvious by the prior art relied upon in the
rejections.

DECISION
The Examiner’s decision to reject claims 1, 3-9, and 15-18 is
affirmed.

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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) (2007).

AFFIRMED

Klh

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