Ex Parte TelferDownload PDFPatent Trial and Appeal BoardAug 21, 201813808049 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/808,049 03/22/2013 26721 7590 08/23/2018 LEGAL DEPT., IP GROUP M-I L.L.C. 10001 Richmond Avenue IP Administration Center of Excellence HOUSTON, TX 77042 FIRST NAMED INVENTOR George Telfer 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. 81054207-US-PCT 6842 EXAMINER LAMBE, PATRICK F ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): USDocketing@slb.com jalverson@slb.com SMarckesoni@slb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE TELFER Appeal2017-009576 Application 13/808,049 1 Technology Center 3600 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and FREDERICK C. LANEY, 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 the Examiner's Final Rejection of claims 16-22, which constitute all the claims pending in this application. Claims 1-15 have been canceled. App. Br. 13 (Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons explained below, we REVERSE the Examiner's rejection. 1 According to the Appellant the real party in interest is M-I Drilling Fluids UK Limited. App. Br. 3. Appeal2017-009576 Application 13/808,049 THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates to a device deployable upon a workstring during a down hole operation and retrievable with the workstring upon completion of the downhole operation." Spec. 1:3-5. Apparatus claim 16 and method claim 19 are independent. Claim 16 is illustrative of the claims on appeal and is reproduced below. 16. A blow-out preventer stack protection device comprising: a running tool configured to be attached to a downhole work string, said running tool comprising: a running tool body seperably connected to a running tool housing having a downhole profile shape configured to sealingly engage with a chamfered surface; a protector sleeve, defining an inner annulus through which the work string runs, associated with the running tool housing, said protector sleeve configured to sealably engage with a blow-out preventer stack seal so as to fluidly isolate a plurality of rams associated with the blow-out preventer stack from the inner annulus; and at least one shearable pin connecting the running tool housing to the running tool body wherein the releasable fasteners 2 are configured to shear when a predetermined amount of force is applied to the running tool housing. REFERENCE RELIED ON BY THE EXAMINER Reid et al. US 2009/0314492 Al Dec. 24, 2009 2 Appellant states that the highlighted text, i.e., "releasable fasteners," was inadvertently overlooked when replacing the term "releasable fasteners" with "at least one shearable pin" in the Amendment dated January 11, 2016. Appellant states, "[t]hus, reference to 'the releasable fasteners' in claims 16 and 19 is an oversight and will be amended to properly refer to the 'at least one shearable pin' upon conclusion of this appeal." App. Br. 4 (footnote 1). We abide by Appellant's statement, as, apparently, does the Examiner who has not contested this lack of antecedent basis. 2 Appeal2017-009576 Application 13/808,049 THE REJECTION ON APPEAL Claims 16-22 are rejected under 35 U.S.C. § 102(b) as anticipated by Reid. ANALYSIS Both independent claims 16 and 19 include the limitation of "a protector sleeve, defining an inner annulus," with this sleeve being configured "to fluidly isolate" its interior from its exterior. The Examiner states, "[t]he language of claim 16 following the word 'configured' is functional language." Ans. 3. Appellant disagrees with this assessment contending that such language instead "recites a fundamental characteristic of the claimed invention." Reply Br. 3 ( citations omitted). Appellant states that such "configured to" language "designate[s] an actual state of configuration that fundamentally ties 'fluidly isolate[ing] a plurality of rams associated with the blow-out preventer stack from the inner annulus' to the physical characteristics of the claimed protector sleeve." Reply Br. 4. We agree with Appellant's characterization that this "configured to" language is directed to "physical characteristics of the claimed protector sleeve" ( e.g., "sealably engage with a blow-out preventer stack seal" and "fluidly isolate a plurality of rams ... from the inner annulus"). We also agree with Appellant's contention that such language "is not merely an intended use," but that "it should be given patentable weight." Reply Br. 4; see also id. at 7. The Examiner specifically addresses this "configured to ... fluidly isolate" claim language by referencing Paragraph 84 of Reid as teaching this limitation. Ans. 3; see also Final Act. 2 ("[t]he sleeve can be sealably 3 Appeal2017-009576 Application 13/808,049 engaged with a blow-out preventer stack seal to isolate a plurality of rams"). Paragraph 84 of Reid discusses "windows" in protection sleeve 12, and, the Examiner states, "the windows are blocked by the fingers so [as] to assure that debris does not build up (0084)."3 Ans. 3. Appellant, on the other hand, references Paragraph 29 of Reid which states, "the windows providing a fluid flow passage between the outside of the sleeve and the bore" (i.e., inside) but that "debris is prevented from building up within the collet and preventing the fingers from moving to the third position to unset the lock." App. Br. 6-7; see also id. at 9; Reply Br. 5. Appellant specifically states, "Reid's teaching of preventing debris build-up is not equivalent to fluidly isolating." Reply Br. 5---6. We agree with Appellant's understanding that there is a distinction in Reid between teachings directed to "fluid" and those directed to "debris." See supra. We also understand Reid as teaching that fluid can flow through the windows in the protective sleeve, but not debris, so as to not disrupt the operation of the fingers within the windows. See Reid ,r 29. Further, the Examiner does not make clear how Reid's teachings directed to windows permitting fluid flow "can be sealably engaged ... to isolate" such flow instead. Final Act. 2. The Examiner has also identified where Reid expressly discloses the use of a "protection sleeve" to protect a seal from damage "by the returned mud and cuttings during drilling," such return flow being identified by the Examiner as "swarf." Ans. 3 (referencing Reid ,r 86). Addressing such "swarf," the Examiner states, "[i]n Reid, the protection sleeve 12 is used to 3 Reid Paragraphs 7 4 and 77 discuss the fingers being positioned within the windows. 4 Appeal2017-009576 Application 13/808,049 protect a different safety seal from the same debris." Ans. 3. Thus, it appears the Examiner is equating "swarf' with "debris," and not "fluid." The Examiner further states (with respect to the above protective function), "[t]he function is identical, but merely placed in an alternative location in the wellbore." Ans. 3. However, considering this "alternative location" finding by the Examiner, we have been instructed instead that "[c]laims cannot be 'anticipated' by devices that are not the same." TF3 Limited v. Tre Milano, 894 F.3d 1366, 1374 (Fed. Cir. 2018). Not only must each claim element be shown in a single reference, but the elements must be "arranged or combined in the same way as recited in the claims." Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). We are also instructed that prior art that must be modified "to accomplish the function performed by the patent in question," does not anticipate. Topliff v. Topliff, 145 U.S. 156, 161 (1892). In view of the above, it is not disputed that Reid expressly teaches a plurality of windows in the protective sleeve that provide "a fluid flow passage" from the outside of the sleeve to the inside. Reid ,r 29; see also App. Br. 6-7, 9. As above, the Examiner does not explain how, in view of such express teachings, Reid teaches the limitation of a sleeve configured "to fluidly isolate" its outside from its inside. 4 Further, as also addressed above, Reid teaches protection from "returned mud and cuttings during drilling," but the Examiner acknowledges that Reid must be modified so as to bring such protective function to "an alternative location in the wellbore." 4 We further note that the Examiner, when addressing dependent claim 22, acknowledges that Reid "creates a fluid connection to the outside surface of the sleeve 12." Ans. 5. 5 Appeal2017-009576 Application 13/808,049 Reid ,r 86; Ans. 3. Accordingly, and based on the record presented, the Examiner has not established by a preponderance of the evidence that Reid anticipates the above recited limitation regarding "fluidly isolate." Thus, we do not sustain the Examiner's rejection of independent claims 16 or 19, nor do we sustain the Examiner's further anticipation rejection of dependent claims 17, 18, and 20-22. DECISION The Examiner's rejection of claims 16-22 as being anticipated by Reid is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation