Ex Parte Robottom et al

Patent Trial and Appeal Board

Aug 17, 2016

12840470 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/840,470 07/21/2010
102197 7590 08/19/2016
Chamberlain, Hrdicka, White, Williams
& Aughtry, P.C.
1200 Smith Street, 14th Floor
Houston, TX 77002
FIRST NAMED INVENTOR
Gavin Paul Robottom
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.
ll 1078-021500US 1204
EXAMINER
MICHENER, BLAKE E
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
08/19/2016 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):
Patents@chamberlainlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GA VIN PAUL RO BOTTOM,
EDWARD T. THORNBURROW, and
NIGEL HOGG
Appeal2014-006642
Application 12/840,470
Technology Center 3600
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, 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 a final
rejection of claims 1, 5-12, and 14. App. Br. 5. Claims 2--4 and 13 are
objected to. Final Act. 13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-006642
Application 12/840,470
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to an outer casing string and
associated method of installation. More particularly, the disclosure relates to
a surface casing head that may be run-in through a rotary table and a diverter
for installation." Spec. i-f 3. Claims 1 and 8 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below:
1. A surface casing head for installation within an installed
conductor system including a diverter, the surface casing head
compnsmg:
an outer tubular member insertable through the diverter
and including an annular recess;
an inner tubular member at least partially disposed within
and moveable relative to the outer tubular member; and
a sleeve ring rotatably coupled to the inner tubular, the
sleeve ring comprising a snap ring that is displaceable between
an extended position and a retracted position;
wherein in the extended position, at least a portion of the
snap ring is received within the annular recess and the outer
tubular member is axially immovable relative to the inner
tubular member; and
wherein in the retracted position, no portion of the snap
ring is received within the annular recess and the outer tubular
member is axially moveable relative to the inner tubular
member.
2
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Application 12/840,470
REFERENCES RELIED ON BY THE EXAMINER
Van Bilderbeek US 4,938,289 July 3, 1990
Nguyen1 US 2002/0100596 Al Aug. 1, 2002
Nguyen2 US 2005/0167095 Al Aug. 4, 2005
THE REJECTIONS ON APPEAL
Claims 1, 5, and 6 are rejected under 35 U.S.C. § 102(b) as anticipated
by Van Bilderbeek.
Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by
Nguyen 1.
Claims 6-12 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nguyen 1 and Nguyen 2.
ANALYSIS
The rejection of claims 1, 5, and 6 as anticipated by Van Bilderbeek
Independent claim 1 recites "[a] surface casing head" comprising
certain components. The Examiner references "fig. 6" of Van Bilderbeek as
disclosing "a surface casing head." Final Act. 7. Appellants contend that
"[i]n the oil and gas industry," "it is commonly understood that a casing
head is an adapter between a casing string and ... a wellhead." App. Br.
10-11; see also Reply Br. 5. Employing Appellants' definition, the
Examiner finds "[e]lements 108 & 132 of Van Bilderbeek are between
casing 102 & wellhead 120, and each expressly support respective casing
1 The Examiner and Appellants refer to this reference as "Nguy en 1." We
do the same.
2 The Examiner and Appellants refer to this reference as "Nguyen 2." We
do the same.
3
Appeal2014-006642
Application 12/840,470
104 & 106." Ans. 5 (referencing Van Bilderbeek Fig. 5). The Examiner
concludes, "[t]his is, by [Appellants'] own arguments, the function of a
casing head." Ans. 5; see also Ans. 6 and Van Bilderbeek Fig. 6. On this
point, we are not persuaded of Examiner error based on Appellants'
contention that "the Examiner's proposal to interpret the claimed casing
head as a casing hanger is inconsistent with what one skilled in the art would
conclude."3 App. Br. 11; see also Reply Br. 7.
However, independent claim 1 also includes the limitation of a casing
head comprising "an outer tubular member insertable through the diverter."
Appellants contend, "Van Bilderbeek does not teach a surface casing head
including an outer tubular member that is insertable through a diverter."
App. Br. 11; Reply Br. 7, 8. The parties dispute whether this limitation is
directed to an intended use (e.g., Ans. 6-7) or instead is a positive recitation
(App. Br. 11; Reply Br. 7-8). We are of the opinion that the diverter in
claim 1 has been positively recited because the diverter imposes a constraint
on the size of the outer tubular member. 4 The Examiner does not identify
3 Regarding any difference in terminology or vocabulary employed, the
Examiner notes where Appellants' Specification states, "[a]s one skilled in
the art will appreciate, different people may refer to the same feature or
component by different names." Ans. 3 referencing Spec. i-f 30; see also
Reply Br. 5-7.
4 The Examiner states, "assuming arguendo, that a diverter is positively
required by the claim, this can be drawn to either element 102 or 114, both
of which surround 'outer tubular member' element 108 and provide an
annular space to circulate fluid between them." Ans. 7. However, the claim
limitation clearly states "an outer tubular member insertable through the
diverter" such that the ability to circulate fluid between them is not
indicative that the outer tubular member is insertable through (i.e., past) the
diverter as recited. See also Spec. i-f 62.
4
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Application 12/840,470
any teaching in Van Bilderbeek that expressly discloses this limitation, nor
does the Examiner make a finding of inherency on this point. See e.g., Final
Act. 7, Ans. 6-7. Instead, the Examiner states, "it is possible to construct a
tubular member of any desired size, large or small." Ans. 7. In short, the
Examiner seems to be relying on an obvious modification (i.e., "possible to
construct a tubular member of any desired size") as support for the
anticipation rejection of claim 1. However, lacking any express or inherent
disclosure of each and every limitation in the single prior art reference, 5 we
are not in agreement with the Examiner that the limitations of claim 1 are
anticipated by Van Bilderbeek. We reverse the Examiner's rejection of
independent claim 1 and dependent claims 5 and 6.
The rejection of claim 1 as anticipated by Nguyen 1
Claim 1 also includes the limitation of "a sleeve ring rotatably
coupled to the inner tubular member." Appellants acknowledge that after
pin 86 has been sheared, "the tensioning collar 78 then moves longitudinally
along the inner sleeve 42." App. Br. 12-13; Reply Br. 10. However,
"Nguyen 1 does not teach a sleeve ring rotatably coupled to an inner tubular,
as independent claim 1 requires." App. Br. 13 (emphasis added); Reply Br.
9. In contrast, the Examiner finds, "the structure taught by Nguyen 1 is
inherently capable of rotating at least once shear pin 86 is broken, which is
sufficient for the purposes of apparatus claim 1 as presently worded."6 Ans.
5 See Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed.
Cir. 1987).
6 The Examiner states, "[t]here is nothing taught in Nguyen 1 which
precludes rotation between 78 & the inner tubular." Ans. 11.
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Appeal2014-006642
Application 12/840,470
11. Such inherency, the Examiner explains, is because "[t]he relatively low
friction between 78 & 42 will likewise not prevent relative rotational
movement in the same manner that it does not prevent axial movement."
Ans. 11. In other words, "ring 78 is inherently capable of being rotated
relative to 42 because it is already shown as moving axially against friction,
and no structure shown or taught would prevent rotation." Ans. 11.
Regarding the Examiner's inherency finding on this point, we are
instructed that inevitability is at the heart of inherency, that inherency
requires that "the missing descriptive matter is necessarily present in the
thing described in the reference," and "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) (emphasis added); see In re Oelrich, 666 F.2d 578, 581
(CCP A 1981) ("probabilities or possibilities" are not enough to find that the
prior art inherently discloses something not explicitly present.); see also In
re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (the fact that a certain result
or characteristic may occur or be present in the prior art is not sufficient to
establish the inherency of that result or characteristic.) Accordingly, we are
asked by the Examiner to understand that because Nguyen 1 discloses
longitudinal movement, rotational movement is (inevitably) also disclosed.
We are not willing to make that presumption. Although it may be
reasonable for rotational movement to have been suggested to one skilled in
the art in view of the teachings and structure of Nguyen 1, the rejection
before us is one of anticipation. As such, we are not of the opinion that the
Examiner has met the initial burden of providing a basis in fact and/ or
technical reasoning to support the determination that the relied-upon
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Application 12/840,470
inherent characteristic necessarily flows from the teachings of Nguyen 1.
See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986).
Accordingly, for the above reasons, we reverse the Examiner's
rejection of claim 1 as being anticipated by Nguyen 1.
The rejection of claims 6--12 and 14
as unpatentable over Nguyen 1 and Nguyen 2
Claims 6 and 7
Claims 6 and 7 depend directly or indirectly from claim 1. Appellants
contend that these claims are allowable "[fJor at least the reasons explained
above with respect to claim 1." App. Br. 14; Reply Br. 12. We do not
sustain the Examiner's rejection of claim 1 as discussed supra. Further, the
Examiner does not employ Nguyen 2 in a manner that might cure the defect
of Nguyen 1 discussed above. Accordingly, we reverse the Examiner's
rejection of claims 6 and 7.
Claims 8-12 and 14
Regarding independent claim 8 and dependent claims 9-12 and 14,
Appellants argue these claims together. App. Br. 14--15. We select claim 8
for review with dependent claims 9-12 and 14 standing or falling with claim
1. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend that neither reference teaches "a segmented
landing ring" as recited. App. Br. 14; Reply Br. 12. To be clear, neither
reference, standing alone, is relied on by the Examiner for all the limitations
recited with respect to the claimed "segmented landing ring." Final Act. 11-
13. Thus, to the extent Appellants are arguing the art individually,
Appellants' contentions are not persuasive of Examiner error.
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Application 12/840,470
That said, the Examiner acknowledges that Nguyen 1 "does not
explicitly disclose that the first landing ring is segmented" and relies on
Nguyen 2 for teaching this limitation. Final Act. 11. Appellants address the
Examiner's reliance on Nguyen 2 stating, "the load segments 92 in Nguyen
2 do not include a body with a plurality of segments disposed therein and
actuatable to extend from the body." App. Br. 14; Reply Br. 13. Nguyen 2
discloses a segmented ring 92 whose individual segments are spring biased
into a "contracted position" (Nguyen 2 i-f 39) and which can be "opened to
their expanded position" (Nguyen 2 i-f 41). See also Ans. 12-13.
Accordingly, Appellants' contention is not persuasive of Examiner error.
Appellants next contend that neither reference (and particularly
Nguyen 2) discloses a plurality of actuable segments that "extend from the
body to form a shoulder." Reply Br. 13; see also App. Br. 14. However,
regarding the limitation of a "shoulder," the Examiner relies on Nguyen 1
for this. Final Act. 9-10 (referencing"~ 50, fig lA"). Appellants do not
explain how the Examiner's reliance on Nguyen 1 for disclosing a shoulder
is incorrect or otherwise warrants reversal of this rejection.
Appellants also contend that neither reference teaches "a threaded
landing ring." App. Br. 14. However, Appellants fail to indicate how the
Examiner's reliance on Nguyen 2 for teaching this limitation is incorrect.
Final Act. 10 (referencing "~ 38 'bolting' the two halves together requires
threads"').
Appellants further contend, "[i]n Nguyen 2, the actuation ring 96 is
not rotatably coupled to the bore 80 of the casing hanger body 78." App. Br.
15. The Examiner states, "[l]ooking at fig 4 ofNguyen 2 (included above)
the annular mating surfaces between 96 & body 80 is a smooth ring and
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Application 12/840,470
there is nothing to preclude rotation." Ans. 15. The Examiner further notes,
"[r]ing 96 is already taught as moving axially, so the friction between 96 &
80 is therefore not sufficient to prevent rotation as well." Ans. 15.
Appellants do not provide additional arguments attempting to rebut these
findings by the Examiner. Accordingly, we are not persuaded the
Examiner's findings are in error.
Lastly, Appellants contend that the Examiner "misunderstands the
use and definition of a threaded landing ring rotatably coupled to an
inner tubular." Reply Br. 13. Appellants again reference "actuation ring
96 in Nguyen 2" (Reply Br. 14) discussed supra. We also note the
Examiner's reliance on Nguyen 1 for teaching a "landing ring rotatably
coupled to the inner tubular." Final Act. 11 (referencing "62, ~ 50; there is
nothing rotationally locking 62, as it is only axially trapped between 58
& 64"). We are not persuaded the Examiner's reliance on these references
1s m error.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 8-12 and 14 as being unpatentable in view of
Nguyen 1 and Nguyen 2.
DECISION
The Examiner's rejection of claims 1, 5, and 6 as being anticipated by
Van Bilderbeek is reversed.
The Examiner's rejection of claim 1 as being anticipated by Nguyen 1
is reversed.
The Examiner's rejection of claims 6 and 7 as being unpatentable
over Nguyen 1 and Nguyen 2 is reversed.
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Appeal2014-006642
Application 12/840,470
The Examiner's rejection of claims 8-12 and 14 as being unpatentable
over Nguyen 1 and Nguyen 2 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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