Ex Parte Strattan et al

Board of Patent Appeals and Interferences

May 6, 2011

10972923 (B.P.A.I. May. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SCOTT C. STRATTAN, JEFFREY K. ADAMS,
THOMAS S. MYERLEY, JASON IVES, and JEFFREY C. WILLIAMS
____________

Appeal 2009-012387
Application 10/972,923
Technology Center 3700
____________

Before: RICHARD M. LEBOVITZ, SCOTT R. BOALICK, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012387
Application 10/972,923

2
STATEMENT OF THE CASE
Scott C. Strattan et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 3, 4, 22, 24-26, and 30-
32. Claims 8-16 have been withdrawn from consideration, and claims 2, 5-
7, 17-21, 23, and 27-29 are cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.

THE INVENTION
Appellants’ claimed invention is “a safety valve with a chemical
injection configuration,” and a related method of maintaining the operation
of the same. Spec. 2, para. [0004]; Claims Appendix. Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A safety valve having a safety valve housing comprising:
a hydraulic fluid pressure operated piston at the safety
valve housing;
a flow tube in operable communication with the piston;
and
a chemical injection configuration disposed within the
safety valve housing configured to apply a chemical to an
outside surface of the flow tube and the chemical injection
configuration includes a fluid conduit and a pressure test
assembly for the fluid conduit, the pressure test assembly
includes:
a pressure housing having at least one opening for fluid
flow and fluidly connected to the fluid conduit;
at least one check valve in fluid communication with the
pressure housing; and
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Application 10/972,923

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a cartridge receivable and movably positionable within
the pressure housing and located between the fluid conduit and
the at least one check valve and having at least one opening for
fluid flow, the cartridge being positioned to inhibit fluid
communication between the fluid conduit and the at least one
check valve until a pressure in the fluid conduit reaches a
threshold pressure independent of a cracking pressure of the at
least one check valve.

THE REJECTION
Appellants seek review of the Examiner’s rejection of claims 1, 3, 4,
22, 24-26, and 30-32 under 35 U.S.C. § 103(a) as unpatentable over
McCalvin (U.S. Patent 6,148,920; issued November 21, 2000) and Baker
(U.S. Patent 2,178,845; issued November 7, 1939).

ISSUE
The issue presented by this appeal is whether the proposed
modification to McCalvin is based upon a sufficient reason with a rational
underpinning to explain why a person of ordinary skill in the art would have
relocated McCalvin’s testing device 72 to be positioned to inhibit fluid
communication between the fluid conduit (fluid injection conduit 36) and
the at least one check valve (check valve 58 or 60) to reach the subject
matter of independent claims 1 and 24.

ANALYSIS
Independent claim 1 is directed to a safety valve having a safety valve
housing comprising a cartridge positioned to inhibit fluid communication
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Application 10/972,923

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between the fluid conduit and the at least one check valve until the pressure
in the fluid conduit reaches a threshold pressure independent of the cracking
pressure of the at least one check valve. Thus, the cartridge must be
positioned between the fluid conduit and the at least one check valve.
Independent claim 24 is directed to a method of maintaining the
operation of the safety valve that includes the steps of “pressure testing a
fluid conduit by pressurizing the fluid in the conduit, the fluid being
segregated from at least one check valve” and “increasing pressure in the
fluid conduit above a threshold pressure of a cartridge retainer to allow fluid
communication with the at least one check valve.” The method of claim 24
for segregating the fluid between the fluid conduit and the at least one check
valve requires some device positioned between the fluid conduit and the at
least one check valve. Appellants’ Specification describes that this
segregation may be accomplished by cartridge 84. App. Br. 3; Spec. 5-6,
para. [0023] as amended December 15, 2004.
Consequently, independent claims 1 and 24 each require a device
(e.g., a cartridge) positioned between the fluid conduit and the at least one
check valve.
The Examiner found that McCalvin’s testing device 72 corresponds to
the claimed cartridge,
1
and concluded that it would have been obvious to
modify McCalvin’s device by relocating testing device 72 so that it is

1
The proposed combination also modifies McCalvin’s testing device 72 to
be in the form of a cartridge as taught by Baker; however Appellants do not
challenge this modification. See Ans. 3-4 and App. Br. 4-7.
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positioned between the fluid conduit and the at least one check valve as
called for in independent claims 1 and 24. Ans. 3-7. The Examiner provides
two rationales for this proposed modification. Ans. 4-5, 8-9.
First, the Examiner concluded that such a modification was an
obvious rearranging of parts involving only routine skill in the art. Ans. 4-5
(citing In re Japikse, 181 F.2d 1019 (CCPA 1950)). We cannot agree.
In Japikse, the court held that moving a starter switch to a location
different from the prior art was an obvious variation because the operation of
the device would not be modified. In re Japikse, 181 F.2d at 1023. Here, as
the Examiner acknowledges (Ans. 9), the proposed modification alters the
function of McCalvin’s device in that testing device 72 will not be able to
test the integrity of the portion of fluid injection conduit 36 and its
accompanying fittings that are downstream of testing device 72. Given this
change in function, the proposed modification is more than a matter of
obvious design choice. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992)
(finding of obvious design choice precluded when claimed structure and the
function it performs are different from the prior art).
The Examiner’s second rationale is that the proposed modification
would have been an obvious use of prior art elements according to their
established functions with the predictable outcome of permitting testing
device 72 to test only those fluid fittings upstream of testing device 72. Ans.
8-9. Again, we cannot agree.
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Application 10/972,923

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McCalvin discloses a subsurface safety valve 10 that may be provided
with a testing device 72 that tests the integrity
2
of the fluid injection conduit
36 and any fittings connected to the conduit 36 such as check valves 58 and
60. McCalvin, col. 6, ll. 66 – col. 7, l. 6; fig. 1A. The proposed
modification is not the use of prior art elements (i.e., testing device 72)
according to their established function (i.e., testing the integrity of fluid
injection conduit 36 and any connected fittings, such as check valves 58 and
60) because repositioned testing device 72 would be upstream of check
valves 58 and 60 and thus would be unable to test their integrity.
Given that the proposed modification would destroy the intended
purpose of McCalvin’s testing device 72 of testing the integrity of the fluid
injection conduit 36, we fail to see, and the Examiner has failed to
adequately articulate, what would motivate a person of ordinary skill in the
art to make such a proposed modification. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
We conclude that the proposed modification to reposition McCalvin’s
testing device 72 between fluid injection conduit 36 and check valves 58 and

2
The integrity test determines if there are any leaks and verifies if the fluid
injection conduit 36 will operate at a minimum operating pressure.
McCalvin, col. 6, ll. 66 – col. 7, l. 6; fig. 1A.
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Application 10/972,923

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60 is not supported by an adequate rationale. Given this, we do not sustain
the rejection of independent claims 1 and 24 or their respective dependent
claims 3, 4, 22, 25, 26, and 30-32.

CONCLUSION
The proposed modification to McCalvin is not based upon a sufficient
reason with a rational underpinning to explain why a person of ordinary skill
in the art would have relocated McCalvin’s testing device 72 to be
positioned to inhibit fluid communication between the fluid conduit (fluid
injection conduit 36) and the at least one check valve (check valve 58 or 60)
to reach the subject matter of independent claims 1 and 24.

DECISION
The Examiner’s decision to reject claims 1, 3, 4, 22, 24-26, and 30-32
is REVERSED.

REVERSED

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