Ex Parte Marchand et alDownload PDFPatent Trial and Appeal BoardJul 14, 201612831457 (P.T.A.B. Jul. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/831,457 92297 7590 Conley Rose P.C P.O.Box 3267 Houston, TX 77253 FILING DATE FIRST NAMED INVENTOR 07/07/2010 Nicholas Ryan Marchand 07118/2016 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. 1814-58001 2477 EXAMINER WANG, WEI ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 07/18/2016 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): pathou@conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICHOLAS RYAN MARCHAND, JEREMY SCOTT CLEMENTS, STEVEN EDWARD HACKMAN, and TYLER JARRET DYCK Appeal2014-007503 Application 12/831,457 1 Technology Center 3600 Before LYNNE H. BROWNE, JEREMY M. PLENZLER, and LISA M. GUIJT, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner's Final Decision rejecting claims 1-8, 17-22, and 25-28. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Appellants identify National Oilwell Varco, L.P. as the real party in interest. App. Br. 3. Appeal2014-007503 Application 12/831,457 CLAIMED SUBJECT MATTER Claims 1, 17, and 25 are independent, with claims 2-8, 18-22, and 26-28 depending from claim 1, 17, or 25. Claim 1 is illustrative of the claims on appeal, and is reproduced below: 1. A driveshaft assembly for a downhole motor, comprising: a housing; a driveshaft rotatably disposed within the housing, the driveshaft having a central axis, a first end, and a second end; a driveshaft adapter having a first end coupled to the first end of the driveshaft with a universal joint, wherein the first end of the driveshaft adapter includes a counterbore, and wherein the first end of the driveshaft and the universal joint are disposed in the counterbore; an end cap disposed about the driveshaft and coaxially coupled to the driveshaft adapter by threaded engagement of an internal thread disposed on an inner surface of the driveshaft adapter and an external thread on an outer surface of the end cap; an annular gap radially positioned between the driveshaft and the end cap; a seal boot disposed about the driveshaft and adapted to restrict fluid flow through the annular gap, wherein the seal boot has a first end secured to the driveshaft and a second end secured to the end cap; and a locking assembly radially positioned between the end cap and the driveshaft adapter and including a retention member that engages the end cap and the driveshaft adapter, wherein the retention member is axially spaced from the engaged internal and external threads, and wherein the retention member is configured to restrict the end cap from moving axially relative to the driveshaft adapter. 2 Appeal2014-007503 Application 12/831,457 REJECTIONS 1. Claims 1-8 and 17-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wenzel (US 7, 186, 182 B2, iss. Mar. 6, 2007) and Chansrivong (US 2009/0149053 Al, pub. June 11, 2009); and 2. Claims 25-28 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Wenzel, Chansrivong, and Kraus (US 6,949,025 Bl, iss. Sept. 27, 2005). OPINION Claim 1 is directed to a "driveshaft assembly for a downhole motor," claim 17 is directed to a "method for assembling a driveshaft assembly for a downhole motor," and claim 25 is directed to a "downhole motor." The Examiner cites Wenzel as teaching the majority of limitations recited in each of these claims. See Final Act. 2--4, 9-10. Figures 3 and 4 from Wenzel are reproduced below. 56 64 18 12 Figure 3 3 Appeal2014-007503 Application 12/831,457 Figure 4 Figures 3 and 4 from Wenzel are fragmentary section views of opposite ends of a driveline for a downhole motor. Wenzel describes its driveline as including a shaft 12 and end housings 14, 16. Wenzel, 2:31--41. Wenzel further explains that "[e]nd housings 14 and 16 and ends 18 and 20 of shaft 12 are held together by a threaded retaining nut 52 which presses against a split retaining ring 54." Id. at 3:7-9. The Examiner cites Wenzel's end housing 14 as corresponding to the "driveshaft adapter" recited in the claims and Wenzel's threaded retaining nut 52 as corresponding to the "end cap" recited in the claims. Final Act. 3. The Examiner acknowledges that Wenzel does not teach the locking assembly features recited in the claims. Id. at 3--4, 10. Those features include, for example, "a locking assembly ... including a retention member that engages the end cap and the driveshaft adapter ... and ... is configured 4 Appeal2014-007503 Application 12/831,457 to restrict the end cap from moving axially relative to the driveshaft adapter" (claim 1 ), "restricting the end cap from moving axially relative to the driveshaft adapter with ... an end cap retention member" (claim 1 7), and "a locking assembly adapted to restrict the end cap from moving axially relative to the driveshaft adapter ... include[ing] ... a retention member" (claim 25). The claims each further define the retention member's engagement with and location relative to features of the end cap and drive shaft adapter. The Examiner finds that Chansrivong teaches a locking assembly and proposes modifying Wenzel accordingly. Id. at 4--5, 11. The Examiner provides an annotated version of Wenzel's Figure 4 to illustrate how the disclosure of Wenzel would be modified to include the features from Chansrivong. Id. at 6. The Examiner's annotated version of Figure 4 from Wenzel is reproduced below. 62/ 5~ 2 j '~ :;~;;.:t, .... :~.::<..::0:: i'-'-0'{:.:::•; ~;';~ .... ,,'::..~·~ ;('.;--,.~>~:'.» ~~·~~· ;.;.::-;:-.~ The annotated version of the figure provided by the Examiner is an enlarged view of a portion ofWenzel's Figure 4 that indicates where the Examiner considers threaded engagement between end housing 16 and threaded 5 Appeal2014-007503 Application 12/831,457 retaining nut 52 to terminate (labeled "[ e ]ngaged threads stop here"), as well as a portion considered to be unthreaded (labeled accordingly). The Examiner finds, for example, that Chansrivong's canted coil spring 180 corresponds to the retaining member recited in the claims (Final Act. 4, 10) and proposes including that spring in the region labeled "unthreaded portion" in the annotated version of Wenzel's Figure 4 (id. at 4, 11 ). The Examiner concludes that this modification to Wenzel would have been "an obvious design choice" and additionally explains that the proposed modification provides an "extra locking means [that] will prevent the thread connection between the end cap and the driveshaft adapter from becoming loose in downhole." Id. at 4--5, 10-11. Appellants contend that "it would not be obvious to one skilled in the art to place the retaining spring 18[0] of Chansrivong [in Wenzel's unthreaded portion] because [] any such unthreaded portion is so miniscule there would be virtually no room to place the retaining spring 180." App. Br. 22. Appellants further contend that "the proposed modification relies on impermissible hindsight." Id. Based on the record before us, we are persuaded that the Examiner has failed to establish sufficiently that one skilled in the art would have modified Wenzel' s driveline in the manner proposed by the Examiner. Although Wenzel arguably discloses the threaded engagement between end housing 16 and threaded retaining nut 52 and the unthreaded portion where that threaded engagement terminates, as shown in the Examiner's annotated version of Wenzel's Figure 4, the Examiner offers no persuasive reason as to why Wenzel's driveline would have been modified to include Chansrivong' s canted coil spring 180 in that region. The 6 Appeal2014-007503 Application 12/831,457 Examiner asserts that "the canted coil spring (180 Chansrivong) has to be installed within this unthreaded portion in order to avoid interfering with the internal and external threads" (Final Act. 4, 11 ), but this reasoning incorrectly starts with the premise that Chansrivong' s canted coil spring 180 would be included in Wenzel. The Examiner additionally notes that "Chansrivong further explicitly suggests that threaded screws may be used in combination with a canted coil spring (i-f 0004 lines 18-20)," but it is unclear how this supports the Examiner's rejection. Final Act. 4, 10. The cited portion of Chansrivong simply states that "mechanical fasteners, such as threaded screws or lock nuts, may be used in combination with spring-based connectors." Chansrivong i14. The fact that a threaded screw may be used in combination with Chansrivong' s canted coil spring 180 does not imply that Chansrivong's canted coil spring 180 would be used in Wenzel's driveline simply because of a threaded engagement between portions of that driveline. As for the Examiner's assertion that the proposed modification provides an "extra locking means [that] will prevent the thread connection between the end cap and the driveshaft adapter from becoming loose in downhole" (Final Act. 5, 11 ), there is no corresponding explanation as to why this would be achieved. Nor does our review of the disclosure of Wenzel reveal why (or how) this would be achieved. For example, we do not see grooves or recesses, like those depicted in Chansrivong (see Chansrivong, Fig. 6A), formed on the surfaces between Wenzel' s end housing 16 and threaded retaining nut 52 that would receive Chansrivong's canted coil spring 180. Nor do we see any surfaces on Wenzel's end housing 16 or threaded retaining nut 52 on which Chansrivong's canted coil 7 Appeal2014-007503 Application 12/831,457 spring 180 could exert an axial locking force. Perhaps more importantly, the Examiner does not allege that such features exist in Wenzel or propose corresponding modifications to Wenzel. We are also not persuaded by the Examiner's characterization of the modification as mere design choice. It appears that the Examiner relies on design choice simply for the location of Chansrivong' s canted coil spring 180 in Wenzel's driveline. See Final Act. 4--5, 11 ("installing the canted coil spring within the unthreaded portion is an obvious design choice"); see also Ans. 5---6. The problem with this rationale is that one skilled in the art first must have reason to include Chansrivong's canted coil spring 180 in Wenzel's driveline, which, as noted above, the Examiner fails to establish sufficiently. To the extent the Examiner's rejections can be read as proposing to add Chansrivong' s canted coil spring 180 in Wenzel' s driveline based on design choice, we are not persuaded that an allegation of design choice is sufficient to support that modification. Furthermore, even if one skilled in the art would have combined Chansrivong's canted coil spring 180 with Wenzel's driveline, we are not persuaded that it would have been obvious to do so in the manner proposed by the Examiner. In the Final Action, the Examiner does not propose modifying Chansrivong's canted coil spring 180 or the structure ofWenzel's driveline to accommodate that spring. See Final Act. 4--5, 11 (Examiner proposes "installing [ Chansrivong' s] canted coil spring within [Wenzel' s] unthreaded portion"). As Appellants note, it is unclear whether such a region is appropriate to receive Chansrivong's canted coil spring 180. App. Br. 22. For example, Wenzel appears to illustrate the height of the unthreaded portion as corresponding to the height of the threading. See 8 Appeal2014-007503 Application 12/831,457 Wenzel, Figs. 3, 4. The Examiner attempts to address these deficiencies in the Examiner's Answer, noting, for example, that "[e]ven though the unthreaded portion is small, it would have been obvious to one with ordinary skill in the art at the time of the invention to modify the length of the unthreaded portion based on the size of the spring (180) of Chansrivong in order to place the spring (180) of Chansrivong within the unthreaded portion of Wenzel." Ans. 5. Even if we considered this further proposed modification, this is simply a conclusion, completely devoid of any rational underpinning. We agree with Appellants (see Reply Br. 5) that this conclusory reasoning is insufficient to cure the deficiencies noted above. For at least these reasons, the Examiner has failed to establish sufficiently that claims 1-8, 17-22, and 25-28 are unpatentable under 35 U.S.C. § 103(a). DECISION We REVERSE the Examiner's decision to reject claims 1-8, 17-22, and 25-28 as unpatentable under 35 U.S.C. § 103(a). REVERSED 9 Copy with citationCopy as parenthetical citation