Ex Parte Lloyd et al

Patent Trial and Appeal Board

Dec 15, 2015

12049765 (P.T.A.B. Dec. 15, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/049,765 03/17/2008
62763 7590 12/16/2015
Tod T. Tumey
TumeyLLP
P.O. BOX 22188
HOUSTON, TX 77227-2188
FIRST NAMED INVENTOR
Sam S. Lloyd
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.
3580-00200 7472
EXAMINER
WALLA CE, KIPP CHARLES
ART UNIT PAPER NUMBER
3676
MAILDATE DELIVERY MODE
12/16/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAM S. LLOYD and MICHAEL R. REAVES
Appeal2013-008064
Application 12/049, 7 65 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
BART A. GERSTENBLITH, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sam S. Lloyd and Michael R. Reaves ("Appellants") appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 11, 13-19,
22, 24--32, 34, and 35. We have jurisdiction under 35 U.S.C. § 6(b ).
1 Appellants identify "Weatherford/Lamb, Inc." as the real party in interest.
Appeal Br. 3. After filing the briefs in this appeal, Appellants filed a
statement under 3 7 C.F .R. § 3. 73 (b ), indicating that the patent application is
currently assigned to Weatherford Technology Holdings, LLC. See
Statement Under 37 C.F.R. § 3.73(b) (filed Apr. 17, 2015).
Appeal2013-008064
Application 12/049,765
Claimed Subject Matter
Claims 11 and 22, the independent claims on appeal, are
representative of the claimed subject matter and reproduced below.
11. A bi-directional valve for use as a downhole casing
isolation valve comprising:
a housing having a longitudinal axis, a fluid flow path
and a stationary valve seat;
a moveable valve element having an outer cylindrical
surface;
the stationary valve seat having a cylindrical, axially
extending valve seating surface; and
the valve element having a valve seating area on the
outer periphery of the cylindrical surface engaging the
cylindrical, axially extending valve seating surface on the valve
seat in a closed position so as to seal the valve in both
directions, and an annular cylindrical locking sleeve.
22. A bi-directional valve for use as a downhole casing
isolation valve comprising:
a valve seat housing having an axially extending,
cylindrical inner surface forming an interior chamber;
a movable valve element having an outer cylindrical
surface;
said movable valve element being axially and rotatably
movable for movement into interior chamber of the valve seat
housing whereby the cylindrical, inner surface of the valve seat
housing and the outer cylindrical surface of the valve element
form a bi-directional valve; and
an inwardly extending shoulder at one end of the interior
chamber which engages the movable valve element in the
closed position of the valve.
Appeal Br. 9-10, Claims App.
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Appeal2013-008064
Application 12/049,765
Rejections
Appellants seek review of the following rejections:
I. Claims 11, 15, 17, 18, 22, 24, 27, 29, 30, 32, 34, and 35 are
rejected under 35 U.S.C. § 103(a) as unpatentable over McGay
(US 3,084,904, iss. Apr. 9, 1963) and Drane (US 2,873,942, iss.
Feb. 17, 1959);and
II. Claims 13, 14, 16, 19, 25, 26, 28, and 31 are rejected under
35 U.S.C. § 103(a) as unpatentable over McGay, Drane, and Fineberg
(US 4,531,587, iss. July 30, 1985).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
ANALYSIS
Rejection I
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In the Final Office Action, the Examiner finds that McGay discloses
"an annular cylindrical locking sleeve" by identifying "the annular
cylindrical threaded surface pointed to by reference numeral 306" in McGay.
Final Act. 3 (mailed Sept. 20, 2012). After receiving Appellants' Appeal
Brief, in which Appellants asserted that element 306 in McGay is a port, not
an annular cylindrical locking sleeve (Appeal Br. 6), the Examiner clarified
the finding, stating that the rejection "was referring to the entire annular
cylindrical portion to the left of the bolt as the locking sleeve, as shown in
fig. 1 below." Ans. 3. In their Reply Brief, Appellants assert that the
Examiner's annotation identifies "merely a portion of the valve body 302[,]
which the examiner has already held to read on the housing." Reply Br. 1.
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Appeal2013-008064
Application 12/049,765
McGay's Figure 1 is reproduced below.
McGay's Figure 1 is a side view in section, "illustrating a swinging gate
valve with modified actuating linkage which enables the valve gate to be
swung on a diametral axis through an initial increment of movement and
swung about an offset axis during the remainder of the gate movement, the
gate being shown in seated position." McGay, 1 :71-2:4. McGay teaches
that "valve body 302 has aligned ports 304 and 306 with suitable
connections for inlet and outlet pipes." Id. at 2:33-34.
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Appeal2013-008064
Application 12/049,765
The Examiner's annotated version of McGay's Figure 1 is reproduced
below.
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Ans. 4. The Examiner's annotated version of a portion of McGay's Figure 1
includes an arrow pointing to what the Examiner refers to as an "[a ]nnular
cylindrical locking sleeve." Id.
As Appellants indicate, the Examiner relies upon element 302
(McGay's valve body) as disclosing the "housing" recited in claim 11. Final
Act. 3. As noted above, the Examiner now also relies upon element 302 as
the recited "annular cylindrical locking sleeve." We fail to see how the
valve body discloses both the valve housing and an annular cylindrical
locking sleeve. Additionally, claim 11 recites that the bi-directional valve
comprises, inter alia, a housing and a valve element. Appeal Br. 9, Claims
App. It is the valve element that is recited as having "an annular cylindrical
locking sleeve." Id.
Accordingly, the Examiner has not shown by a preponderance of the
evidence that McGay discloses an annular cylindrical locking sleeve as
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Appeal2013-008064
Application 12/049,765
recited in claim 11 and claims 15, 17, 18, and 34, which depend from
claim 11.
Additionally, for the same reasons, the Examiner has not shown that
McGay discloses the "locking sleeve," recited in claim 24 and the "locking
sleeve ha[ ving] an annular cylindrical shape," recited in claim 32. See Final
Act. 5 (relying on the same findings as claim 11 ). Accordingly, we do not
sustain the Examiner's rejection of claims 24 and 32.
Claims 22, 27, 29, 30, and 352
With respect to claim 22, the Examiner relies upon McGay's
element 354 as disclosing the recited "inwardly extending shoulder." Final
Act. 5; Ans. 3. Appellants assert that the Examiner relies on the "inner
surface 354 of McGay" as disclosing the cylindrical inner surface of the
valve seat and the inwardly extending shoulder, each recited in claim 22.
Appeal Br. 7. Appellant asserts that McGay's element 354 cannot disclose
both elements of the claim. Id.; Reply Br. 1-2.
2 Appellants do not separately argue claims 22, 27, 29, 30, and 35. Appeal
Br. 7-8; Reply Br. 1-2. We select claim 22 as representative. Accordingly,
claims 27, 29, 30, and 35 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Appeal2013-008064
Application 12/049,765
In response to Appellants' argument, the Examiner finds that "the
shoulder is the entire area inside the box as shown in fig. 2 below and the
seat is the inner surface of the shoulder." Ans. 3. The Examiner refers to a
second annotated version ofMcGay's Figure 1, which is reproduced below.
The Examiner's "Fig. 2" shows an annotated version of a portion of
McGay's Figure 1, in which the Examiner has identified with arrows where
the Examiner finds that McGay discloses the valve seat and shoulder recited
in claim 22. Ans. 4.
The Examiner's reliance on McGay's disclosure, in this instance, is
different than the discussion above regarding the Examiner's reliance upon
the same element as disclosing both the housing and locking sleeve. First, in
Appellants' Summary of Claimed Subject Matter, Appellants state the
following: "Independent claim 22 ... includes ... an inwardly extending
shoulder 51 shown most clearly in FIG. 4 within the interior chamber
formed in valve seat housing 50 .... Moveable valve element engages valve
seat 51 in the closed position as shown in FIG. 7 ." Appeal Br. 5; see also
Spec. i-f 30 (referring to valve seat 51). In other words, Appellants' Appeal
Brief and Specification identify the same reference numeral as both the
valve seat and the shoulder. Second, the Examiner's annotated version of
McGay's Figure 1, shown above, illustrates how McGay discloses both a
valve seat and a shoulder. As shown, the surface of the identified structure
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Appeal2013-008064
Application 12/049,765
acts as a valve seat, whereas the entire area inside the Examiner's annotated
box acts as a shoulder. The full version of McGay's Figure 1 supports the
Examiner's findings because it shows the valve gate engaging the surface
identified by the Examiner in the closed position as recited in claim 22. 3
Accordingly, we sustain the rejection of claim 22, and claims 27, 29,
30, and 35, which depend therefrom.
Rejection II
Claims 13, 14, 16, and 19
Claims 13, 14, 16, and 19 depend, directly or indirectly, from
claim 11. The Examiner relies upon McGay as disclosing the "annular
cylindrical locking sleeve" recited in claim 11 to same extent discussed
above, in the context of Rejection I. Accordingly, for the same reasons we
discussed therein, we do not sustain the Rejection II as applied to claims 13,
14, 16, and 19.
Claims 25, 26, 28, and 31
Claim 25 depends from claim 22 and further recites "a protective
sleeve moveable to isolate the valve element from fluid flow when the valve
is in the open position." Appeal Br. 10, Claims App. The Examiner finds
that McGay fails to disclose a protective sleeve, relying instead upon
Fineberg as disclosing this element of claim 25. Final Act. 6. The Examiner
determines:
3 We recognize that Appellants assert that McGay discloses a shoulder 358
(Appeal Br. 7), but that alone does not preclude McGay from disclosing a
second shoulder, element 354, even ifMcGay does not refer to that element
as a "shoulder."
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Appeal2013-008064
Application 12/049,765
Id.
It would have been obvious to one skilled in the art at the time
of the invention to have equipped the apparatus of McGay with
a protective sleeve as taught by Fineberg in order to protect the
valve member, which is a well-known step to take, and also to
provide a straighter flow path when the valve is retracted,
reducing turbulence, a well-known property of fluid dynamics.
Appellants assert that "[a ]lthough Fineberg ... discloses a protective
sleeve at 30, it is not at all clear to the manner in which the examiner is
combining the three references." Appeal Br. 8. Appellants contend that the
structure and actuation mechanism of McGay and Fineberg are "markedly
different" and that "[i]t is not evident nor has the examiner explained how
the McGay device could be modified to accommodate a protective sleeve
along the lines of Fineberg." Id.
In response to Appellants' argument, the Examiner states that
valve sleeves such as 30 are so well known that it is not
necessary to explain how to include them into a valve. [T]he
sleeves typically originate and are controlled from a different
housing section which is also true in Fineberg since Fineberg
does not show the workings of sleeve 30 because they are so
conventional that an explanation of their operation is not
necessary.
Ans. 3--4 (citing Fineberg, 3:46-55). In their Reply Brief, Appellants assert
that "[t]he issue is not whether valve sleeves are well known, it's how would
one be incorporated into the McGay assembly." Reply Br. 2.
We agree with the Examiner that valve sleeves are well known. That
recognition, however, does not explain where one of ordinary skill in the art
would have added a protective sleeve to McGay's teachings. Simply stating
that "sleeves typically originate and are controlled from a different housing
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Appeal2013-008064
Application 12/049,765
section" (Ans. 3--4), does not provide the specificity required such that
Appellants may respond. It is not that the Examiner must explain how, i.e.,
each and every step of the process, such a sleeve would be bodily
incorporated into the McGay's apparatus, for bodily incorporation is not
required; rather, the Examiner should have explained at least where in
McGay's teaching such structure would have been obvious to add. Without
additional details regarding the location of such a sleeve, Appellants are at a
loss as to how to respond to the Examiner's rejection.
Accordingly, we do not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 11, 13-19, 24--
26, 28, 31, 32, and 34.
We affirm the Examiner's decision rejecting claims 22, 27, 29, 30,
and 35.
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
JNS
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