Ex Parte Wald et alDownload PDFPatent Trial and Appeal BoardMay 29, 201814438822 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/438,822 04/27/2015 23632 7590 05/31/2018 SHELL OIL COMPANY POBOX576 HOUSTON, TX 77001-0576 FIRST NAMED INVENTOR Glenn Martin Wald 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. TH5344-US-PCT 3649 EXAMINER LAMBE, PATRICK F ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 05/31/2018 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): USPatents@Shell.com Shelldocketing@cpaglobal.com shellusdocketing@cpaglobal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GLENN MARTIN WALD, TIMOTHY EDWARD MARTIN, and STEPHEN THORNTON JEFFREY Appeal2017-008623 Application 14/438,822 Technology Center 3600 Before JENNIFER D. BAHR, BRANDON J. WARNER, and ARTHUR M. PESLAK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1, 2, and 4--9. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant is the Applicant, Shell Oil Company, which the Appeal Brief identifies as the real party in interest. Br. 2. Appeal2017-008623 Application 14/438,822 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A side entry flow spool comprising a forging with flanges located at the top and bottom; an inlet located on the side; an outlet located at the top; one or more additional inlets located on the side of the forging; and an internal cavity that is fluidly connected to the inlet and outlet wherein there is no opening at the bottom. REJECTION Claims 1, 2, and 4--9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hatton (US 2004/0074649 Al, pub. Apr. 22, 2004) and Milberger (US 6,966,383 B2, iss. Nov. 22, 2005). DISCUSSION The Examiner finds that Hatton discloses a side entry flow spool, substantially as recited in claim 1, with the exception that "Hatton fails to disclose additional inlets on the side of the forging." Final Act. 2. The Examiner finds that "Milberger discloses a horizontal spool tree (1 O)" in which "[m]ultiple inlets (28, 102) are placed on the sides." Id. The Examiner determines that it would have been obvious to "modify the number of inlets of the spool of Hatton to have the plurality of inlets of Milberger" for the purpose of "predictably allowing flow over from one side to the other." Id. at 2-3. The Examiner additionally identifies various other inlets by means of an annotated reproduction of Figure 1 of Milberger, with annotations circling the various inlets. Id. at 4. According to the Examiner, "[ e Jach inlet [of Milberger] is in fluid communication with the interior of the production bore depending on which valves are opened." Final Act. 4. 2 Appeal2017-008623 Application 14/438,822 Appellant argues that the Examiner's articulated motivation for modifying Hatton in view of Milberger is insufficient "because the proposed modification would not allow flow over from one side to the other." Br. 4--5 (emphasis omitted). According to Appellant, "[i]nlets 28 and 102 are not in fluid communication, and thus modifying Hatton to include this configuration of inlets would not allow flow over from one side to the other." Id. at 5. When making an obviousness rejection, an examiner is required to provide "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In essence, Appellant is attacking the Examiner's articulated reason for the modification of Hatton (i.e., to predictably allow flow over from one side to the other) as lacking a rational underpinning because, according to Appellant, the inlets of Milberger identified by the Examiner (bores 28 and 102), are not in fluid communication, and, thus, modifying Hatton to provide the configuration of inlets taught by Milberger would not allow flow over from one side to the other. Br. 4--5. As such, Appellant's argument is predicated on the assertion that Milberger's bores 28 and 102 are not in fluid communication. In response to Appellant's assertion that Milberger's bores 28 and 102 are "not in fluid communication" (Br. 4--5), the Examiner points out, correctly, that claim 1 does not require that the inlet and the one or more additional inlets be in fluid communication with each other. Ans. 3. Nevertheless, the Examiner identifies disclosure in Milberger of a fluid 3 Appeal2017-008623 Application 14/438,822 communication path between bore 102 and bore 28 by way of crossover line 42, such that the identified bores are in fluid communication with one another. Ans. 3--4. In particular, Milberger discloses that "[ c ]rossover line 42 may be used to establish fluid communication between the lateral bore 30 in the spool body and the annulus line 52." Milberger, col. 4, 11. 14--17 (boldface omitted). As illustrated in Figure 1 of Milberger, crossover line 42 is in direct fluid communication with bore 102, and lateral bore 30 is in direct fluid communication with bore 28. Thus, Milberger describes a fluid communication path between bores 28 and 102.2 Appellant's argument attacking the articulated reason for the combination, therefore, is unsound, in that it is predicated on an incorrect assertion that Milberger' s bores 28 and 102 are not in fluid communication. Moreover, the configuration taught by Milberger, which includes multiple bores 28, 102 in the side wall of the spool body, allows for flow over from one side (the right side as depicted in Figure 1) of the spool to the other side (the left side as depicted in Figure 1) via crossover flow line 42. Thus, the Examiner's articulated rationale for modifying Hatton to provide multiple bores-namely, for predictably allowing flow over from one side to the other (Final Act. 3}-has rational underpinnings. Regarding the Examiner's findings relating to annotated Figure 1 of Milberger (Final Act. 3--4), Appellant argues that "these new openings are not part of the spool body ... but rather are parts of the production block 33 2 Although not relied on by the Examiner, and not necessary to our decision in this appeal, we additionally note that Milberger's bores 28 and 102 are in fluid communication via vertical production bore 28, first closure member 60, which may be a valve, and vertical bore 14. Id., col. 4, 11. 18-19, 23-24. 4 Appeal2017-008623 Application 14/438,822 and annulus block 48" and, therefore, "these inlets would not be located on the side of the forging" as claimed. Br. 6-7. The Examiner responds that "[e]ach path [as per the annotated openings] ends within the spool body and thus would pass through the forging at some point." Ans. 4. We agree with Appellant that these additional openings in Milberger, identified by the Examiner as inlets, are not in the spool body itself and, thus, are not part of the "forging" as required in claim 1. Br. 9 (Claims App.). However, these additional findings are superfluous to the rejection, which relies on bores 28 and 102, which are in the spool body. For the above reasons, Appellant's arguments do not apprise us of error in the rejection of claim 1. Accordingly, we sustain the rejection of claim 1, as well as dependent claims 2 and 4--9, for which Appellant does not present any separate arguments apart from their dependence from claim 1 (Br. 7) and which, thus, fall with claim 1, as unpatentable over Hatton and Milberger. See 37 C.F.R. § 41.37(c)(l)(iv) (permitting the Board to select a single claim to decide the appeal as to a single ground of rejection of a group of claims argued together). DECISION The Examiner's decision rejecting claims 1, 2, and 4--9 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). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation