Ex Parte NguyenDownload PDFPatent Trial and Appeal BoardJun 19, 201712669040 (P.T.A.B. Jun. 19, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/669,040 01/13/2010 Dennis P. Nguyen OTD-031066 US (CMRN:0039) 1939 64833 7590 06/20/2017 FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION) P.O. BOX 692289 HOUSTON, TX 77269-2289 EXAMINER SAYRE, JAMES G ART UNIT PAPER NUMBER 3678 MAIL DATE DELIVERY MODE 06/20/2017 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 DENNIS P. NGUYEN Appeal 2016-000085 Application 12/669,0401 Technology Center 3600 Before MICHAEL C. ASTORINO, AMEE A. SHAH, and ALYSSA A. FINAMORE, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—3, 5, 6, 8—11, 14—21, and 30.2 Appeal Br. 2. Claims 7, 12, 13, and 22—29 have been cancelled. Id. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to the Appellant, “[t]he real party in interest is Cameron International Corporation.” Appeal Br. 2. 2 The rejections in the Final Office Action, mailed October 7, 2014, have been updated in light of the comments in the Advisory Action, mailed January 1, 2015 (hereafter “Adv. Act.”), and the Examiner’s Answer. The Examiner does not maintain a rejection of dependent claim 4. See infra. Appeal 2016-000085 Application 12/669,040 STATEMENT OF THE CASE Claimed Subject Matter Claims 1, 9, and 16 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal.3 1. A system, comprising: a control line configured to extend into a bore; an annular seal coaxial with and surrounding the control line, wherein the annular seal comprises a load ring or a ferrule disposed in the same bore as the control line; a fastener at an offset and external from the control line and the annular seal; and an energizing member configured to bias the annular seal toward a seated position with the control line in response to movement of the fastener. Withdrawn Rejections The Examiner has decided to withdraw the following grounds of rejection. The rejection of claims 1, 3, and 4 under pre-AIA 35 U.S.C. § 102(e) as anticipated by Liepold (US 7,581,976 B2, iss. Sept. 1, 2009). Ans. 2. 3 Independent claim 1 ’s recitation “wherein the annular seal comprises a load ring or a ferrule disposed in the same bore as the control line” was added by amendment after the Final Office Action and entered by the Examiner. See Amendment 2, 6, 8 (filed January 7, 2015); Adv. Act. (stating “[f]or purposes of appeal, the proposed amendment(s): . . . will be entered.”). Notably, the Examiner makes reference to the limitation of claim 7 — a cancelled claim — as having similar requirements as the added language to claim 1. See Ans. 2; see also Adv. Act. Although there are some similarities between the subject matter of cancelled claim 7 and appealed claim 1, the language added to claim 1 is different than the language of cancelled claim 7, which in its entirety stated, “[t]he system of claim 1, wherein the annular seal comprises a load ring and a ferrule” (Amendment 3 (filed July 2, 2014)). 2 Appeal 2016-000085 Application 12/669,040 The rejection of claims 1 and 2 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Tamura (US 5,861,577, iss. Jan. 19, 1999). Ans. 2. The rejection of claims 1—3, 5, and 6 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Satterwhite (US 4,489,959, iss. Dec. 25, 1984). Ans. 2. Appealed Rejections The Examiner has decided to maintain the following grounds of rejection.4 5 6 The rejection of claims 9, 14—17, and 21 under pre-AIA 35 U.S.C. § 102(b) as anticipated by Satterwhite. Final Act. 3. The rejection of claims 1—3, 5, 6, 8, 10, 11, 18—20, and 30 under pre- AIA 35 U.S.C. § 103(a) as unpatentable over Satterwhite and Levy (US 7,032,935 Bl, iss. Apr. 25, 2006).5,6 Final Act. 3; see Ans. 2. 4 The rejections in the Final Office Action have been updated in light of the comments in the Advisory Action and the Examiner’s Answer. Although not reflected by the Appeal Brief— particularly, the listing of the grounds of rejection to be reviewed on appeal — the totality of the Appellant’s arguments in the Appeal and Reply Briefs suggest that the Appellant understands the appealed rejections as listed herein. 5 We understand claim 19 to be rejected under this ground of rejection, despite not being listed in the statement of the rejection. See Final Act. 6. 6 After the Final Office Action, claim 7 was cancelled by Appellant to include similar subject matter into claim 1. See Ans. 2; Adv. Act. Appealed claim 8 depends from cancelled claim 7. Appeal Br., Claims App. In light of the foregoing, we understand the failure to amend claim 8 to depend from a pending (appealed) claim as inadvertent error. Therefore, for the purposes of this appeal only, we understand claim 8 to depend from claim 1. 3 Appeal 2016-000085 Application 12/669,040 ANALYSIS Independent claim 1 and dependent claims 2, 3, 5, 6, 8, and 30 Independent claim 1 requires an annular seal, which includes a load ring or a ferrule, surrounding a control line. See Appeal Br., Claims App. The foregoing requirement of claim 1 is directed to a positional relationship between the annular seal and the control line. Put simply, the annular seal must surround the control line. In relying on Satterwhite’s disclosure, the Examiner finds that sealing means 64 corresponds with the claimed annular seal and hydraulic line 102 corresponds with the claimed control line. Final Act. 3. The Examiner also finds that Satterwhite discloses a load ring. Id. at 5. We understand that the Examiner is referring to Satterwhite’s metallic port liner 96 as corresponding with the claimed load ring. See, e.g., id. at 4. The Appellant contends that “Satterwhite does not disclose a load ring or a ferrule surrounding the control line 102.” Appeal Br. 7 (citing Satterwhite, Fig. 4). We agree. As pointed out by the Appellant, Satterwhite discloses third body 98, which is positioned between sealing means 64 and metallic port liner 96, and control line 102. See id. We also note that the Examiner fails to adequately explain in the Final Office Action, Advisory Action, and Answer — and it is not otherwise apparent — how Satterwhite’s sealing means 64 and metallic port liner 96 can be understood as surrounding control line 102. We note that the Examiner also relies on Levy to disclose the use of a load ring and one or more ferrules. Final Act. 5—6 (citing Levy, Fig. 2). The Examiner concludes that “[i]t would have been considered obvious ... to one of ordinary skill in the art to configure the seals of Satterwhite as 4 Appeal 2016-000085 Application 12/669,040 ferrules to obtain the predictable result of providing sealing for the system, or as a matter of design choice by substituting one known type of seal for another.” Id. at 6; see also Ans. 2—3. This rationale does not appear to change the positional relationship between Satterwhite’s annular seal (as modified by Levy’s teachings) and control line 102. As such, the Examiner’s modification of Satterwhite’s structures in view of Levy’s teachings does not cure the deficiency of Satterwhite’s disclosure with regard to the positional relationship between the annular seal and the control line as required by claim 1. Thus, we do not sustain the Examiner’s rejection of independent claim 1 and dependent claims 2, 3, 5, 6, 8, and 30. Independent claim 9 and dependent claims 10, 11, 14, and 15 Independent claim 9 recites “a plurality of load rings configured to mount around and move axially about a plurality of control lines, a first load ring surrounds a first control line but not a second control line, and a second load ring surrounds the second control line but not the first control line.” Appeal Br., Claims App. (emphases added). The Examiner’s findings for the rejection of claim 9 as anticipated by Satterwhite are similar to the Examiner’s findings based on Satterwhite for the rejection of independent claim 1. More specifically, the Examiner finds Satterwhite’s metallic port liners 96 correspond with the claimed plurality of load rings and hydraulic lines 102 correspond with the claimed control lines. Final Act. 4; Ans. 3, 4 (citing Satterwhite, Fig. 4). Hence, among other things, a first metallic port liner 96 must surround a first hydraulic line 102, but not a second hydraulic line 102. See also Satterwhite, Figs. 1—5. 5 Appeal 2016-000085 Application 12/669,040 The Appellant, similar to the rejection of claim 1, points out that Satterwhite discloses third body 98, which is positioned between sealing means 64 and metallic port liner 96, and control line 102. See Appeal Br. 8. Although the Examiner provides an explanation how a plurality of load rings can be understood as being mounted around a plurality of control lines (Ans. 3—4), the Examiner fails to adequately explain in the Final Office Action, Advisory Action, and Answer — and it is not otherwise apparent — how a single metallic port liner 96 can be understood as surrounding a first control line 102 without surrounding a second control line 102. Thus, we do not sustain the Examiner’s rejection of independent claim 9, and dependent claims 14 and 15. Also, we do not sustain the rejection of dependent claims 10 and 11, which do not add fmding(s) or reasoning that remedies the deficiency of the Examiner’s rejection of independent claim 9. Independent claim 16 and dependent claims 17—21 Independent claim 16 recites a control block comprising a plurality of passages each having a control line and an annular seal coaxial with the control line, wherein a force applied to an energizing member is configured to simultaneously couple and seat the annular seals coaxially with the control lines associated with the plurality of passages, respectively. Appeal Br., Claims App. (emphases added). The Examiner finds that sealing means 64 corresponds with the claimed annular seal and hydraulic line 102 corresponds with the claimed control line. Final Act. 5; see id. at 3. Among other things, the Appellant argues that sealing means 64 is not seated with control line 102. See Appeal 6 Appeal 2016-000085 Application 12/669,040 Br. 8—9. The Appellant, similar to the rejection of claim 1, points out that Satterwhite discloses third body 98, which is positioned between sealing means 64 and metallic port liner 96, and control line 102. See id. at 9. In response, the Examiner appears to conclude that sealing means 64 is seated with control line 102 without explaining how sealing means 64 is seated with control line 102. We determine that the Appellant’s argument is persuasive because the Examiner does not explain — and we cannot ascertain — how sealing means 64 is seated with control line 102. Thus, we do not sustain the Examiner’s rejection of independent claim 16 and dependent claims 17 and 21. Also, we do not sustain the rejection of dependent claims 18—20, which fails to add fmding(s) or reasoning that remedies the deficiency of the Examiner’s rejection of independent claim 16. DECISION We REVERSE the Examiner’s decision rejecting claims 1—3, 5, 6, 8— 11, 14—21, and 30. REVERSED 7 Copy with citationCopy as parenthetical citation