Ex Parte Martin et alDownload PDFPatent Trials and Appeals BoardMay 23, 201913139522 - (D) (P.T.A.B. May. 23, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/139,522 08/05/2011 Pierre Martin 22850 7590 05/28/2019 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 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. 381213US41X PCT 1529 EXAMINER LINFORD, JAMES ALBERT ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 05/28/2019 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): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PIERRE MAR TIN and ERIC VERGER 1 Appeal2017-009353 Application 13/139,522 Technology Center 3600 Before JOHN C. KERINS, MICHAEL L. HOELTER, and SEAN P. O'HANLON, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner's final rejection of claims 18-20, 25, 30, and 34. App. Br. 1, 2. Claims 1-17 have been canceled and claims 21-24, 26-29, and 31-33 have been withdrawn. App. Br. 2. Appellants' counsel presented oral argument on May 7, 2019. We have jurisdiction under 35 U.S.C. § 6(b). For the 1 "Vallourec Oil and Gas France and Nippon Steel & Sumitomo Metal Corporation are the real parties in interest by way of assignments." App. Br. 1. We proceed on the basis that, for the purpose of this appeal, Vallourec Oil and Gas France and Nippon Steel & Sumitomo Metal Corporation are the "Appellants." Appeal2017-009353 Application 13/139,522 reasons explained below, we find error in the Examiner's rejection of these claims. Accordingly, we REVERSE the Examiner's rejection. CLAIMED SUBJECT MATTER The disclosed subject matter "relates to a threaded connection with a self-locking threading comprising." Spec. ,r 1. 2 Apparatus claim 18 is the sole independent claim; is representative of the claims on appeal; and, is reproduced below. 18. A threaded connection comprising: a first and a second tubular component, each including a respective male and female end, the male end comprising, on its external peripheral surface, at least one threaded zone and finishing in a terminal surface which is orientated radially with respect to an axis of the threaded connection, the female end comprising, on its internal peripheral surface, at least one threaded zone and finishing in a terminal surface which is orientated radially with respect to the axis of the threaded connection, the male threaded zone comprising a first portion in which a width of teeth, CWTp, increases from a value CWTpmin corresponding to a width of a tooth which is closest to the terminal surface of the male end to a value CWTpmax corresponding to a width of a tooth which is furthest from the terminal surface, while a width of teeth CWTb of the female threaded zone decreases from a value CWTbmax corresponding to a width of a tooth which is furthest from the terminal surface of the female end to a value CWTbmin corresponding to a width of a tooth which is closest to the terminal surface, such that the threaded zones cooperate in accordance with a self- locking make-up, and: 2 We refer to Publication No. US 2011/0278838 Al dated November 17, 2011. 2 Appeal2017-009353 Application 13/139,522 and Watts CWTpmin 2: 0.2 CWTbmax CWTbmin < CWTpmin CWTpmax CWTbmax. REFERENCE US 6,578,880 B2 THE REJECTION ON APPEAL June 1 7, 2003 Claims 18-20, 25, 30, and 34 are rejected under 35 U.S.C. § 103(a) as unpatentable over Watts. ANALYSIS Sole independent claim 18 recites two inequalities involving ratios between minimum and maximum male and female teeth width of a threaded connection where the teeth width varies in an axial direction. As explained in Appellants' Specification, this arrangement of varying teeth width is "of a known 'self-locking' type (also said to have a progressive variation of the axial width of the threads and/or the intervals between the threads)." Spec. ,r 38. The Examiner finds that Watts directly discloses these inequalities. See Final Act. 4. The Examiner additionally finds that these inequalities are taught by Watts based on "an obvious matter of design choice as determined through routine experimentation and optimization." Final Act. 5, 6 ("discovering the optimum or workable ranges involves only routine skill in the art"). The Examiner explains that "such a modification would have involved a mere change in the size and/or proportion of a component." Final Act. 5; see also Ans. 9. To buttress such findings, the Examiner annotates 3 Appeal2017-009353 Application 13/139,522 Figure 2 of Watts identifying where Watts discloses maximum and minimum male and female thread widths. Final Act. 3; see also Ans. 6. This annotated figure is reproduced below. The above figure "depicts the connection of FIG. 1 at the position of full make-up." Watts 12: 3 0-31. The Examiner identifies maximum and minimum male thread widths (CWTpmax and CWTpmin) and, respectively, female thread widths (CWTbmax and CWTbmin). Appellants do not dispute that Watts discloses "a connection of a box and a pin at a position of full make-up" and additionally replicate Figure 7 of Watts, which the Examiner also relies upon. App. Br. 6; see also Final Act. 3, 4. However, Appellants argue, "Watts neither anticipates nor renders obvious every feature of the rejected claims." Reply Br. 2. Regarding whether or not Watts anticipates claim 18, it is not disputed that Watts discloses maximum and minimum male and female thread widths. See Examiner's annotation above; see also Watts 13:2--4. However, Watts is silent as to any numerical value of a tooth width, or a proportion between a maximum and a minimum tooth width. Instead, Watts only discloses teeth whose width varies axially. See supra. Thus, although it may transpire that 4 Appeal2017-009353 Application 13/139,522 an actual measurement of Watts' actual teeth 3 may disclose the recited inequalities, there is no certainty that this would, indeed, be the case. The Examiner attempts to address this uncertainty by employing the figures of Watts to graphically illustrate that, in these figures, the width of one tooth fits multiple times within the width of another. See Ans. 5-9. Thus, based on this analysis, the "Examiner respectfully disagrees [ with Appellants] and notes that Watts anticipates [the recited inequalities], see the explanations above." Ans. 9. There is no doubt that "patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue." Hockerson- Halberstadt, Inc. v. Avia Group Int'!, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). Here, we agree with Appellants "that Watts nowhere indicates that [] its figures are to scale, nor has the Examiner identified any citation from Watts that indicates as such." Reply Br. 2. The Examiner, however, states that "drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art." Ans. 5 n.1 (referencing In re Aslanian, 590 F.2d 911 (CCPA 1979)). As indicated above, it is not disputed that Watts discloses teeth whose width varies axially. However, because the Examiner has not indicated that Watts' figures are drawn to scale, it is not proper to scale such figures by graphically showing how many minimum tooth widths might fit within a maximum tooth width. See Ans. 6-8. 3 Assuming that a physical embodiment were produced in accordance with the teachings of Watts. 5 Appeal2017-009353 Application 13/139,522 Additionally, it is well known that 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., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,631 (Fed. Cir. 1987). Here, because the Examiner fails to identify where Watts expressly discloses numerical thread width values that may be employed as evidence that Watts discloses the recited inequalities, the Examiner must, instead, be relying on a theory of inherency. On this point, we are instructed, "there are strict requirements before a finding of inherent anticipation is made. Indeed, inevitability is at the heart of inherency." Howmedica Osteonics Corp. v. Zimmer, Inc. 640 Fed. Appx. 951,957 (Fed. Cir. 2016). In other words, "that a certain thing may result from a given set of circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Because the Examiner has not provided sufficient reasoning that the claimed proportions are necessarily or inevitably present in Watts, we reverse the Examiner's findings that claims 18-20, 25, 30, and 34 are anticipated by Watts. Regarding whether claim 18 is obvious over the teachings of Watts (see Final Act. 4---6; Ans. 12), "Appellants completely disagree that a person having ordinary skill in the art at the time of invention would have found it an obvious matter of design choice to determine these claim features through routine experimentation and optimization." App. Br. 7; see also id. at 8, Reply Br. 4. Appellants contend that "one of ordinary skill in the art would have had to determine several exact parameters, and further have had to ascertain how to interrelate them in a precise manner." App. Br. 8. The specifically recited parameters (i.e., a maximum and minimum thread width) are illustrated in Watts's figures. Watts, however, also 6 Appeal2017-009353 Application 13/139,522 discloses numerous, almost incalculable, additional parameters whose values can likewise be varied. See Watts 2: 16-65 ( describing such parameters as angles, thread tum, seal, wall thickness, pitch, strength, bridge thickness, and friction). Watts further states that "[t]rapped wedgethreads have many dimensions that must be controlled" including "the crest axial length, the root axial length, the load flank radial width, the stab flank radial width, the stab flank angle, the load flank angle, surface finish" and many more. Watts 8:20-31. Watts further states, "[t]he difficulty of maintaining tolerances during manufacture increases with the Square of the number of related tolerances." Watts 8:31-33. Thus, the Examiner's rejection based on "an obvious matter of design choice as determined through routine experimentation" and "a modification would have involved a mere change in the size and proportion of a component" (Final Act. 5; see also Ans. 9) is, instead, an over-simplification of the complexities involved in view of the express teachings of Watts. The Examiner does not explain how or why a skilled person, in view of the numerous parameters disclosed in Watts, would have selected the specific parameters recited, and also would have interrelated them in the precise manner claimed. See App. Br. 8. We, thus, agree with Appellants that "the recited relationships are not discoverable by merely routine experimentation." App. Br. 8. Consequently, under this "routine experimentation" rationale, the Examiner fails to provide articulated reasoning with rational underpinning to support the finding of obviousness. Regarding the Examiner's rejection based on optimization, Appellants argue that, "the variables must first be recognized as result-effective variables." App. Br. 8. The Examiner responds, stating "[a]s for the result- effective variable(s), the thickness (width) of a tooth or teeth have an effect 7 Appeal2017-009353 Application 13/139,522 on the strength of the tooth or teeth and/or the retaining force of the joint." Ans. 11; see also Final Act. 5, Ans. 13. Be this as it may, the claim language in question addresses the teeth which are closest to and farthest from the terminal ends of the male and female connectors. See App. Br. 8. Watts may address minimum and maximum teeth width (see Watts 13 :2--4 ), but Watts does not "interrelate them in an exact manner to achieve the claimed relationships." App. Br. 8. Thus, any "result-effective variable" assigned to such values is of the Examiner's own doing since "Watts itself contains absolutely no teaching or suggestion to recognize any of these claimed parameters ... to achieve the above-noted claimed relationships." App. Br. 9; see also Reply Br. 3 ("purely drawn by the Examiner into these annotated figures"). The Examiner "notes that Watts does not have to expressly recognize the individual parameters." Ans. 12. However, the Examiner never explains why a skilled person would have selected to optimize these specific parameters (from among the numerous other parameters identified in Watts), or why such person would have selected the recited inequalities for optimization. Appellants contend that this is because "Watts fails to recognize the technical effects of the claimed invention" and as such, "cannot recognize the specifically claimed ratios," nor how to optimize the recited inequalities. App. Br. 9; see also Reply Br. 6. As per Appellants, "Watts is in fact totally silent on describing such proportions." Reply Br. 3. In summation, Appellants contend that "absent any impermissible hindsight analysis ... [ a skilled person] starting from Watts would not know how to reduce the risk of tearing without creating the other problems (lengthening threads and reducing wedge ratio) noted above." App. Br. 10. In other 8 Appeal2017-009353 Application 13/139,522 words, the Examiner relied on "the benefit of hindsight after viewing Appellants' claimed invention." Reply Br. 6. There is merit to Appellants' misgivings regarding the Examiner's optimization of the specifically recited thread. Appellants challenge the Examiner's reliance on ''per se rules of obviousness" (App. Br. 7, Reply Br. 4) and particularly the Examiner's reliance on a general concept of tooth width/load carrying capacity without specifically explaining how this relationship affects the specifically recited teeth. For example, Appellants explain that if the tooth width is increased too much, such action "increases the risks of jump-out" which, as understood, renders that thread non-load bearing. App. Br. 9; Reply Br. 7. Accordingly, and based on the record presented, we do not sustain the Examiner's rejection of independent claim 18, or dependent claims 19, 20, 25, 30, and as either anticipated by, or unpatentable over, Watts. DECISION The Examiner's rejection of claims 18-20, 25, 30, and 34 is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation