Ex Parte Molina

Patent Trial and Appeal Board

Apr 18, 2018

13827877 (P.T.A.B. Apr. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/827,877
40184 7590
FOLEY GARDERE
Foley & Lardner LLP
03/14/2013
04/20/2018
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
FIRST NAMED INVENTOR
Sara Molina
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.
139038-1000 8743
EXAMINER
GRUBY, RANDALL A
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
04/20/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARA MOLINA
Appeal2017-004824
Application 13/827,877
Technology Center 3700
Before: LYNNE H. BROWNE, LISA M. GUIJT, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-13 and 26-32. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2017-004824
Application 13/827,877
CLAIMED SUBJECT MATTER
The claims are directed to a composite mandrel for an isolation tool.
Claim 1, reproduced below, is the sole independent claim and is illustrative
of the claimed subject matter:
1. A mandrel for an isolation tool comprising:
a composite tube having a first end and a second end,
wherein the first end is adapted to couple to an isolation
tool selected from the group consisting of a bridge plug and a
frac plug;
wherein the composite tube has an inner diameter
extending from the first end to the second end;
wherein a first section of the composite tube has a first
outer diameter and a second section of the composite tube has a
second outer diameter;
wherein the first end has a beveled surface at the first end
defined by a first angle defining the bevel with an interior surface
of the composite tube, wherein the first angle is from about 40 to
about 80 degrees;
wherein the second end has a tapered end defined by a
second angle with an exterior surface of the composite tube,
wherein the second angle defining the tapered end is from about
50 to about 70 degrees;
wherein the composite tube is made from a plurality of
layers of fibers coated with a chemical matrix; and wherein a
second layer of fibers overlaps a first layer of fibers with a first
angle of fabrication from about 40 to about 85 degrees.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nish
Zimmerman
Sutherland
Barlow
US 7 ,900,696 B 1
US 2003/0226668 Al
US 2004/0198539 Al
US 2009/0011247 Al
2
Mar. 8, 2011
Dec. 11, 2003
Oct. 7, 2004
Jan. 8,2009
Appeal2017-004824
Application 13/827,877
REJECTIONS
Claims 29 and 30 are rejected under 35 U.S.C. § 112 second
paragraph as being indefinite.
Claims 1-13 and 26-32 are rejected under 35 U.S.C. § 103(a) as
being unpatentable as follows:
Claims 1-3, 5-13, 26, 27, 29, and 30 over Zimmerman;
Claim 4 over Zimmerman and Nish;
Claim 28 over Zimmerman and Barlow; and
Claims 31 and 32 over Zimmerman and Sutherland.
OPINION
35 us.c. § 112
The Examiner rejects claims 29 and 30 as indefinite because "[t]he
limitation 'the ratio' allows for several reasonable interpretations - e.g. ratio
of parts: ratio of volumes; ratio of mass." Final Act. 3.
Appellant responds that "a person of ordinary skill in the art would
understand the term 'ratio' as a ratio of mass," citing to the discussion in the
Specification discussing ratio and "concentrations for additives (e.g.,
tougheners, fillers, pigments) [] given as weight percent (wt%) of the total
chemical matrix." Appeal Br. 19 (citing Spec. 9, 11. 1--4, 9-15, 12, 11. 3-9,
and 13, 11. 7-13.).
Though the Specification does not directly reference mass or weight
percent when discussing the "ratio of chemical matrix : hardener," after
reviewing the complete Specification, including the discussion on additives,
we agree with Appellant that one of skill in the art would understand the
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Appeal2017-004824
Application 13/827,877
ratio to be referring to a ratio of mass by percent weight. For this reason we
do not sustain the Examiner's rejection of claims 29 and 30 as indefinite.
35 USC§ 103(a)
Among other features, claim 1 requires a "mandrel" with "a
composite tube having a first end and a second end" "wherein the first end
has a beveled surface at the first end." The Examiner finds that Zimmerman
teaches the "beveled surface at the first end" citing the below marked-up
version of a portion of Figure 1 from Zimmerman. Final Act. 4.
Zimmerman Figure 1 "is a partial cross-section view of a plug," of
which the Examiner reproduces an intermediate section of the plug, labeling
what the Examiner identifies as a "BEVELED SURF ACE" of an inner tube.
The Examiner also provides a second marked-up version of a portion of
Figure 1 from Zimmerman, reproduced below to illustrate the Examiner's
position concerning the meaning of the term "end." Final Act. 9.
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Appeal2017-004824
Application 13/827,877
L .. ····.····.··.·.······.·.··.····.············ ···.················· ·.·.··.····.···.····.··.·.··
In this second marked-up version of a portion of Figure 1 from
Zimmerman, the Examiner divides the illustrated plug in half and labels one
half as the first end and the other half as the second end. Id.
The United States Patent and Trademark Office gives claims their
broadest reasonable interpretation consistent with the Specification, reading
claim language in light of the Specification as it would be interpreted by one
of ordinary skill in the art. See In re Am. Acad. of Sci. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
We agree with Appellant that the Examiner failed to "apply[] the
ordinary and customary meaning of the term 'end' to the pending claims."
Appeal Br. 12. The Examiner's claim construction of "end" as being one
half of a device is overly broad. The Examiner cites to the Merriam-
W ebster Online Dictionary as defining "end" to be "the part of an area that
lies at the boundary." Ans. 11. However, the Examiner's position is not
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Appeal2017-004824
Application 13/827,877
consistent with this definition. The Examiner does not show how the
internal bevel could reasonable be considered to be "at the boundary" of the
composite tub in Zimmerman. At the same time, we do not construe "end"
to mean "tip" as argued by Appellant. See id. at 10-11. Rather, after review
of the definitions provided by both Appellant and the Examiner, as well as
the Specification, we construe "end" to be "the part of an area that lies at the
boundary or tip."
As the Examiner does not identify where Zimmerman teaches or
suggests "a beveled surface at the first end" of a tube under this claim
construction, we do not sustain the obviousness rejection of claim 1 or the
related rejections of the dependent claims.
DECISION
The Examiner's rejection of claims 29 and 30 under 35 U.S.C. § 112
second paragraph is reversed.
The Examiner's rejections of claims 1-13 and 26-32 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
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