Ex Parte Mellardo

Board of Patent Appeals and Interferences

Sep 4, 2003

09295212 (B.P.A.I. Sep. 4, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN MELLARDO
_____________
Appeal No. 2003-1210
Application No. 09/295,212
______________
ON BRIEF
_______________
Before GARRIS, TIMM, and POTEATE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-9 which are all of the claims in the application.
The subject matter on appeal relates to a cables arrester in
combination with an energized-fluid conduit comprising a
plurality of cables confined within the conduit and means
removably fixed to a wall surface within the conduit for holding
the plurality of cables in spaced-apart disposition. This
appealed subject matter is adequately illustrated by independent
claim 1 which reads as follows:
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Application No. 09/295,212
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1. A cables arrester, in combination with an
energized-fluid conduit, comprising:
a conduit having a wall surface, the conduit for
conducting an energized fluid therethrough;
a plurality of power cables confined within said
conduit; and
means removably fixed to said wall surface within
said conduit for holding said plurality of cables in spaced-
apart disposition across said conduit.
The references relied upon by the examiner as evidence of
obviousness are:
Kramer et al. (Kramer) 4,483,395 Nov. 20, 1984
Bayh, III (Bayh) 4,913,239 Apr. 3, 1990
Claims 1-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bayh in view of Kramer. According to the
examiner, “it would have been obvious to one having ordinary
skill in the art of cables at the time the invention was made to
modify the bridging means [i.e., electrical connector means 45]
of Bayh . . . to comprise the bridging means [i.e., guard device
10] as taught by Kramer because Kramer teaches that such a
configuration provides protection from abrasion against the inner
surfaces of the conduit (Col. 1, lines 33-36) and provides a
simple and inexpensive construction that functions in a more
efficient manner than any comparable device (Col[.] 3, lines 60-
65)” (answer, page 5).
Appeal No. 2003-1210
Application No. 09/295,212
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This rejection cannot be sustained.
We fully agree with the appellant’s position that the
applied prior art contains no teaching or suggestion for the
above noted combination proposed by the examiner. As correctly
argued by the appellant, Bayh’s electrical connector means (which
the examiner refers to as a “bridging means” in his above quoted
obviousness conclusion) is in a completely different environment
than Kramer’s guard device 10 (which the examiner refers to as a
“bridging means” in his obviousness conclusion). Bayh’s
electrical connector means 45 is disposed within tubing string 20
(e.g., see figure 1), and this tubing string is disposed within a
casing string which is not shown (e.g., see lines 54-58 in column
2). As the examiner seems to appreciate, fluid is directed up
through the tubing string 20 via pump
70 (e.g., see the sentence bridging columns 2 and 3). On the
other hand, Kramer’s guard device 10 is disposed within well
casing 12 for holding drop pipe 11, electrical conductor 17 and
safety rope 18 (e.g., see figure 1). Similar to the tubing
string 20 of Bayh, the drop pipe 11 of Kramer carries water which
is forced through this pipe via pump 15 to discharge line
16 (e.g., see the paragraph bridging columns 1 and 2).
Appeal No. 2003-1210
Application No. 09/295,212
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It is apparent that Bayh’s tubing string 20 corresponds to
Kramer’s drop pipe 11 and concomitantly that Bayh’s casing string
(not shown) corresponds to Kramer’s well casing 12. Viewed from
this perspective, an artisan with ordinary skill might have
combined the applied reference teachings by providing Bayh’s
casing string (not shown) with a guard device of the type taught
by Kramer for holding Bayh’s tubing string 20 within the casing
string pursuant to the manner in which the analogous drop pipe 11
of Kramer is held within his well casing 12. Certainly it is
clear that, in the absence of impermissible hindsight, the
artisan would not have disposed this guard device inside of
Bayh’s tubing string 20 in replacement of patentee’s electrical
connector means 45 (which is referred to by the examiner as a
“bridging means”). This is because such a disposition would be
analogous to using Kramer’s guard device inside of his drop pipe
11, and there is simply no teaching or suggestion in Kramer (or
in Bayh) of such a use.
There are other reasons for doubting that an artisan would
have replaced Bayh’s electrical connector means 45 with Kramer’s
guard device 10 as proposed by the examiner. For example, we do
not perceive and the examiner does not explain how the guard
device would be capable of performing the connecting function
Appeal No. 2003-1210
Application No. 09/295,212
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performed by Bayh’s electrical connector means. Similarly, we do
not perceive and the examiner does not explain how Bayh’s
apparatus, if modified to include use of a guard device as
proposed by the examiner, would be capable of performing the
functions of
inserting and retrieving submersible pump 70, electric motor 50
and related components from a selected downhole location as
desired by patentee (e.g., see lines 8-20 in column 3).
For the above stated reasons, we determine that the applied
reference evidence adduced by the examiner fails to establish a
prima facie case of obviousness within the meaning of 35 U.S.C.
§ 103. It follows that we cannot sustain the examiner’s Section
103 rejection of claims 1-9 as being unpatentable over Bayh in
view of Kramer.
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Application No. 09/295,212
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The decision of the examiner is reversed.
REVERSED

)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CATHERINE TIMM )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LINDA R. POTEATE )
Administrative Patent Judge )
BRG:hh
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Application No. 09/295,212
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MENOTTI J. LOMBARDI
ITT FLUID TECHNOLOGY
10 MOUNTAINVIEW RD.
UPPER SADDLE RIVER, NJ 07458