Ex Parte LaGrange et al

Patent Trial and Appeal Board

Apr 28, 2016

11759126 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111759, 126 0610612007 Timothy Edward LaGrange
87627 7590 05/02/2016
Mossman, Kumar & Tyler PC
P.O. Box 421239
Houston, TX 77242
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.
COR-1103-US 5745
EXAMINER
CLEMENT, MICHELLE RENEE
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
docket@mktlaw.us.com
tthigpen@mktlaw.us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY EDWARD LAGRANGE,
LYLE W. ANDRICH, CORY D. DAY, and DAN W. PRATT
Appeal2014-004828
Application 11/759, 126
Technology Center 3600
Before JENNIFER D. BAHR, LEE L. STEPINA, and
AMANDA F. WIEKER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Timothy Edward Lagrange et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1, 3---6, 8, 10, and
17-22, which are the only claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-004828
Application 11/759, 126
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter. 1
1. An apparatus for use with a perforating device for perforating
a wellbore, the perforating device including a charge tube, a
carrier tube having an interior bore in which the charge tube
is disposed, a detonator cord having a circular cross-sectional
profile disposed in the charge tube, at least one shaped charge
affixed to the charge tube, the at least one shaped
charge having a radially outward pointing post in which a slot
is formed [sic] the apparatus comprising:
Amendment 1.
a retention plate having a[ n] opening and a plurality of
tabs projecting into the opening, the retention plate
being configured to retain the detonator cord within the
slot and having a medial curved bridge portion
that conforms to the profile of the detonator cord,
wherein the bridge portion is sized such that a major
portion of the bridge portion is positioned radially
inward of the radially outermost portion of the post..
REJECTIONS
I. Claims 1, 3---6, 8, 10, and 21 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
1 Claim 1 in Appendix A (Claims on Appeal) of the Appeal Brief is an
incorrect reproduction of claim 1 in this application. See Br. 17. Appellants
state that "[a Jn amendment to claim 1 correcting a typographical error was
not entered," seemingly acknowledging that the revisions indicated by
underlining and bracketing in claim 1 in Appendix A have not been entered.
Id. at 3. The last-entered amendment to the claims, including claim 1, is the
Amendment filed December 22, 2011 (hereinafter "Amendment").
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Application 11/759, 126
IL Claims 1, 3, 4, 6, 10, 21, and 22 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Hancock (US 4,852,495, iss. Aug. 1,
1989).
III. Claims 17-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Appellants' Admitted Prior Art (AAPA) and
Hancock.
DISCUSSION
Rejection I-Indefiniteness
The Examiner pointed out that claim 1, on the one hand, recites an
apparatus for use with a perforating device (i.e., indicating an intended use
of the apparatus but not positively reciting the perforating device and its
components as part of the claimed apparatus), but claim 1 and its dependent
claims, on the other hand, "later appear to recite the apparatus as interacting
with and shaped based on these unclaimed components." Final Act. 2-3.
Merely by way of example, the Examiner points out that claim 8, which
depends from claim 1, "recites 'the retention plate seats substantially
circumferentially around the post"' and queries whether "the post [is] part of
the current invention." Ans. 6. Thus, as explained by the Examiner, "[i]t is
not clear if [Appellants are] now attempting to claim the apparatus in
combination with the perforating device and all that it includes, including
the detonator cord having the specific shape, or if [Appellants are] still
claiming the intended use of the device." Final Act. 3. The Examiner
required "[c]larification." Id.
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Application 11/759, 126
In response, citing Jn re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987),
and Manual of Patent Examining Procedure (MPEP) § 2111 (I), 2 Appellants
contend:
Like the collar of In re Stencel, the detonator cord is recited in
the preamble. Moreover, in exactly the same manner that the
collar "limited the structure of the driver[,]" the detonator cord
limits the structure of [the] retention plate. Thus, [Appellants]
respectfully submit that the structure for the present pending
independent claims are expressly sanctioned by prevailing case
law and recognized as such by the U.S.P.T.O.
Br. 8-9.
Our reviewing court instructs:
[W]hen the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of
§ 112(b ). The satisfactory response by the applicant can take the
form of a modification of the language identified as unclear, a
separate definition of the unclear language, or, in an appropriate
case, a persuasive explanation for the record of why the language
at issue is not actually unclear.
In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). Once an examiner has
rejected the claims based on a well-founded prima facie case of lack of
clarity, "if the applicant does not adequately respond to that prima facie
case," the rejection should be sustained "on the substantive basis of having
failed to meet the requirements of§ 112[, second paragraph]." Id. at 1312.
According to the Examiner, "[Appellants have] failed to clarify
whether the claims are directed to the combination or to the intended use of
2 The language quoted by Appellants appears in MPEP § 2111.02(1).
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Application 11/759, 126
the apparatus." Ans. 2. "Since it is not clear what is included or excluded
by the claim language, the claims are indefinite." Id. at 6.
Here, the Examiner specifically identified a point of ambiguity in the
claims-whether they are directed to an apparatus comprising the retention
plate or to an apparatus comprising the combination of the perforating
device (with its charge tube, carrier tube, detonator cord, and shaped charge)
and the retention plate. Further, the Examiner explained why the claim was
ambiguous. The recitation "for use with ... " in the preamble of claim 1
suggests that the perforating device is not part of the claimed invention
while, on the other hand, subsequent limitations in the claims, such as the
limitation in claim 1 that "a major portion of the bridge portion is positioned
radially inward of the radially outermost portion of the post" and the
limitation in claim 8 that "the retention plate seats substantially
circumferentially around the post" suggest that the perforating device, or at
least the post of the shaped charge, is part of the claimed invention (i.e., that
the claims are directed to the combination of the retention plate and the
perforating device). See Amendment 2, 3 (emphasis added). This was
sufficient to shift to Appellants the burden to explain persuasively for the
record why the language at issue is not actually unclear.
Appellants have not satisfied this burden. Appellants contend that the
detonator cord limits the structure of the retention plate. Be that as it may,
this does not respond to the question of whether the claims are directed to an
apparatus comprising the retention plate or to an apparatus comprising the
combination of the perforating device (with its charge tube, carrier tube,
detonator cord, and shaped charge) and the retention plate. The shape and/or
dimensions of the retention plate may, for example, be defined in part by the
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limitations of the detonator cord and the shaped charge of the perforating
device, as well as the relationship between the detonator cord and the shaped
charge set forth in the preamble, while the detonator cord and the shaped
charge may not, themselves, be part of the claimed invention. Appellants
have not answered the question asked by the Examiner-whether claim 1
requires only the retention plate or the combination of the retention plate
with the charge tube, carrier tube, detonator cord, and shaped charge-much
less explained why the claim language is clear in this regard.
Thus, we sustain the rejection of claims 1, 3-6, 8, 10, and 21 under
35 U.S.C. § 112, second paragraph, as indefinite.3
Rejection II-Anticipation
Appellants argue that Hancock lacks "a medial curved bridge portion
that conforms to the profile of the detonator cord," as called for in
independent claim 1. Br. 10. According to Appellants, "the preamble
phrase ['a detonator cord having a circular cross-sectional profile disposed
in the charge tube'] structurally defines the shape and dimensions of the
curved medial portion of the retention plate by using the size and shape of
the detonator cord." Id. at 11. Appellants urge that "[p]ut plainly, the
preamble phrase defines how the curved medial portion is shaped and not
just how the curved medial portion is intended to be used." Id.
The Examiner found that Hancock's push nut 13 is a retention plate as
called for in claim 1. Final Act. 3. More specifically, the Examiner found
that "Figure 2 shows that when the retention plate is placed on the post the
3 Claim 22 depends from claim 21, and, thus, like claim 21, incorporates the
limitations of claim 1. Upon return of jurisdiction of this application to the
Examiner, the Examiner may wish to consider whether claim 22 also is
indefinite.
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center area forms a curved bridge portion[] that has the shape of a detonator
cord." Id. This finding is based in part on the Examiner's position that
because "it is known for detonator cords to have various shapes and sizes,
... the limitation 'conforms to a shape of a detonator cord' does not limit the
shape or size of the bridge portion." Id. The Examiner found that "Figure 2
shows that both the detonator cord ([push nut] 13) and the retainer are
curved (i.e.[,] conforms to the profile) at the point of contact." Ans. 8.
According to the Examiner, when Hancock's push nut 13 is seated on the
posts (i.e., sides 29 of projection 25), the middle portion of the push nut
"forms a curved bridge portion over [slot 27]," which "conforms to a profile
of the circular cross-section detonator cord," and "it is this conformation that
retains the detonating cord within the slot." Id. at 7.
Appellants, on the other hand, contend that Hancock's Figure 2
"clearly shows the retainer means having a tangential point of contact on the
detonator cord" and argue that "[ w ]hatever curvature that may arise has
nothing to do with the cross-sectional profile of the detonator cord." Br. 12.
Appellants add that Hancock "makes it clear that there is no relationship
between how the 'push nut flexes' and the shape of the detonator cord." Id.;
see Hancock, col. 2, 11. 63---68.
We do not agree with the Examiner that the claim limitation
"conforms to the profile of the detonator cord" does not limit the shape or
size of the curved bridge portion. Claim 1 requires more than a curved
bridge portion; claim 1 requires that the curved bridge portion conform to
the profile of a detonator cord having a circular cross-sectional profile that
fits within a slot formed in a post, and that the curved bridge portion be sized
such that a major portion thereof fits within the diameter of the post.
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The Examiner's finding that Hancock's retainer device 13 satisfies the
"conforms to the profile of the detonator cord" limitation of claim 1 is
premised on Hancock's disclosure that push nut 13 flexes, forming a curved
portion that retains detonating cord 23 in the slot. Hancock discloses that
when push nut 13 is pushed onto projection 25, its outer periphery "flexes
towards the booster wall 31" and that "[t]his flexing forces the detonating
cord 23 into intimate contact with the booster wall 31." Hancock, col. 2, 11.
63-67 (emphasis omitted). Hancock is silent as to whether push nut 13
contacts detonating cord 23 at more than two distinct points of tangency so
as to conform to the profile of detonating cord 23, and the Examiner does
not disagree with Appellants' contention that Hancock's Figure 2 "clearly
shows the retainer means having a tangential point of contact on the
detonator cord." Br. 12. In essence, the Examiner finds that the push nut
flexing and retaining the detonating cord constitutes conforming to the
profile of the detonating cord without establishing the requisite factual basis
to support that finding.
For the above reasons, the Examiner fails to establish by a
preponderance of the evidence that Hancock anticipates the subject matter of
independent claim 1. Accordingly, we do not sustain the rejection of claim 1
or claims 3, 4, 6, 10, 21, and 22, which depend directly or indirectly from
claim 1, under 35 U.S.C. § 102(b) as anticipated by Hancock.
Rejection III-Obviousness
The Examiner's rejection of claims 17-20, which also require a
retention member including "a medial curved bridge portion that conforms
to the profile of the detonator cord," under 35 U.S.C. § 103(a) as
unpatentable over AAP A and Hancock suffers from the same deficiency as
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the rejection of claims 1, 3, 4, 6, 10, 21, and 22 under 35 U.S.C. § 102(b).
See Amendment 3--4; Final Act. 5---6. Accordingly, for the same reasons, we
do not sustain the rejection of claims 17-20 under 35 U.S.C. § 103(a) as
unpatentable over AAP A and Hancock.
DECISION
The Examiner's decision rejecting claims 1, 3-6, 8, 10, and 21 stand
rejected under 35 U.S.C. § 112, second paragraph, is AFFIRMED.
The Examiner's decision rejecting claims 1, 3, 4, 6, 8, 10, 21, and 22
under 35 U.S.C. § 102(b) as anticipated by Hancock is REVERSED.
The Examiner's decision rejecting claims 17-20 under 35 U.S.C.
§ 103(a) as unpatentable over Appellants' Admitted Prior Art (AAPA) and
Hancock 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
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