12772577 (P.T.A.B. Feb. 23, 2018)

Ex Parte Pattom et al

Patent Trial and Appeal BoardFeb 23, 2018

12772577 (P.T.A.B. Feb. 23, 2018)

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. 12/772,577 05/03/2010 Matthew J. Pattom DUR 1017 PA/41211.1531 4174 23368 7590 02/27/2018 DINSMORE & SHOHL LLP FIFTH THIRD CENTER, ONE SOUTH MAIN STREET SUITE 1300 DAYTON, OH 45402-2023 EXAMINER KIM, CHRISTOPHER S ART UNIT PAPER NUMBER 3752 NOTIFICATION DATE DELIVERY MODE 02/27/2018 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): daytonipdocket@dinsmore.com denise.suter@dinsmore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATTHEW J. PATTOM and LLOYD D. HANSON1 Appeal 2016-003019 Application 12/772,577 Technology Center 3700 Before GEORGE R. HOSKINS, BRANDON J. WARNER, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 11-16, 25, and 26.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants indicate that Flowserve Management Company is the real party in interest. Appeal Br. 1. 2 Claims 1-10 and 17 are canceled, and claims 18-24 are withdrawn. See Appeal Br. 7-8 (Claims App.). Appeal 2016-003019 Application 12/772,577 CLAIMED SUBJECT MATTER The claims are directed to tools for removing coke from containers such as coking drums used in oil refining. Spec. ^ 1. Claim 25, reproduced below with emphasis added, is illustrative of the claimed subject matter: 25. A fluid decoking tool comprising: a decoking fluid delivery mechanism configured to receive a pressurized decoking fluid from a source; and a nozzle assembly selectively coupled to said decoking fluid delivery mechanism through a diverter plate, said nozzle assembly comprising: a housing defining a decoking fluid conduit therein; at least one cutting nozzle disposed within said housing and fluidly cooperative with at least a portion of said conduit; and at least one drilling nozzle disposed within said housing and fluidly cooperative with at least another portion of said conduit, each of said at least one cutting nozzle and said at least one drilling nozzle of said nozzle assembly defining an internal flowpath therein with an inlet, an outlet and a curvilinear tapered shape that converges along an axial length from said inlet to said outlet such that an axial dimension of said flowpath is less than two inches in length and a radial dimension of said flowpath is less than two inches in diameter. Appeal Br. 9 (Claims App.). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Glenn Paul US 3,921,915 US 7,819,343 B2 Nov. 25, 1975 Oct. 26, 2010 2 Appeal 2016-003019 Application 12/772,577 REJECTION Claims 11-16, 25, and 26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Paul and Glenn. OPINION The Examiner finds that Paul discloses most of the elements required by claim 25, but that “Paul’s internal flowpath is a straight taper rather than a curvilinear taper.” Non-Final Act. 3. The Examiner finds that Glenn discloses a curvilinear tapered flowpath and uses an inlet cross section A0 and nozzle length L of the flowpath in numerical calculations. Id. at 4. Based on this disclosure, the Examiner determines that it would have been a matter of mere optimization to make an axial and radial dimension of the flowpath less than two inches as required by claim 25. Id. Appellants assert that the arrangement recited in claim 25 is intended to reduce the likelihood that the decoking tool will get stuck during a decoking operation. See Appeal Br. 3-4. Appellants contend that Glenn addresses a problem different from the one addressed by Appellants’ claimed tool, and optimization of the dimensions of a flowpath to satisfy the purpose in Glenn may not result in satisfying the “less than two inches” requirement recited in claim 25. See id. at 3-6. The Examiner replies that the problem solved by Appellants’ claimed arrangement is not recited in claim 25, and, therefore, Appellants’ argument is not commensurate with the scope of claim 25. See Ans. 3—4. Additionally, the Examiner states that the problem addressed by Glenn’s invention does not have to be the same as the one with which Appellants are concerned for the rejection of claim 25 to be proper, and “Glenn [discloses] 3 Appeal 2016-003019 Application 12/772,577 the parameters to be optimized and provides the reason for optimizing . . . albeit different from Appellants].” See id. at 4-5. In reply, Appellants argue “Glenn fails to provide any guidance whatsoever with respect to minimization of axial length,” and Glenn teaches “lengthening the nozzle as much as practicable while avoiding operational failure.” Reply Br. 3. Appellants have the better position. Although the Examiner correctly finds that Glenn teaches adjusting various dimensions in a flowpath, this finding, by itself, is insufficient to support the Examiner’s optimization rationale for providing the “less than two inches” limitation in claim 25. As Appellants indicate, the objective in Glenn is different from the one addressed by Appellants’claimed arrangement. See Glenn, 1:48-54. Thus, it is not apparent that “optimization of Glenn’s equations” (Non-Final Act. 4) would lead to structure the same as that claimed by Appellants. In re Antonie, 559 F.2d 618, 620 (“This sort of experiment would not be suggested by the teachings of [the cited reference] since he was not trying to maximize or control ‘treatment capacity.’ The experiments suggested by [the cited reference] do not reveal the property which applicant has discovered.”). Accordingly, the Examiner falls short of adequately supporting the optimization rationale in the rejection of claim 25. The Examiner provides no other basis, supported by rational underpinnings,3 for the obviousness of the claimed subject matter. See Non-Final Act. 3-5. 3 The Examiner’s general statement that providing a curvilinear taper and the “less than two inches” limitations would have increased efficiency (Final Act. 4) is either tied to the deficient “optimization” rationale, or, if intended as a separate rationale, is not sufficiently explained and supported with evidence. 4 Appeal 2016-003019 Application 12/772,577 Consequently, we do not sustain the rejection of claim 25 and claims 11-16 and 26 depending therefrom as unpatentable over Cast and Glenn. DECISION The Examiner’s rejection of claims 11-16, 25, and 26 is reversed REVERSED 5