Ex Parte Zweifel

Patent Trial and Appeal Board

May 13, 2016

12821498 (P.T.A.B. May. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/821,498 06/23/2010 Thomas J. Zweifel
44639 7590 05/17/2016
CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED
20 Church Street
22nd Floor
Hartford, CT 06103
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.
MTIA-50261-US
(BA00438US)
CONFIRMATION NO.
4070
EXAMINER
THOMPSON, KENNETH L
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
05/1712016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte THOMAS J. ZWEIFEL
Appeal2014-003161
Application 12/821,498
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
Thomas J. Zweifel (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1, 4-8, and 12-16. 1 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Claims 9-11 and 17-19 have been objected to by the Examiner. Final
Act. 1 (Office Action Summary). The Final Action identifies claim 9 both
as being "objected to" and as being rejected under 35 U.S.C. § 102(b). Id. at
1, 2. We understand the inclusion of claim 9 in the statement of the rejection
on page 2 of the Final Action to be an inadvertent error, as the rejection does
not address the limitations of claim 9. See id. at 2.
Appeal2014-003161
Application 12/821,498
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A tubular positioning system comprising:
a first tubular having a plurality of unique inner profiles
disposed at an inner surface thereof; and
a plurality of second tubulars, each having a unique outer
profile disposed at an outer surface thereof, being runnable
within the first tubular, each unique outer profile being
dimensionally configured to be engagable [sic] with no more
than a single one of the plurality of unique inner profiles such
that passage of engagable [sic] profiles therepast is prevented by
engagement therebetween, the unique outer profile being free to
pass the unique inner profiles with which it is nonengagable
[sic], the plurality of unique inner profiles and the plurality of
unique outer profiles being configured to be engagable [sic] with
their complementary counterpart regardless of rotational
orientation of the plurality of second tubulars relative to the first
tubular.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Miller
Buytaert
us 2,673,614
US 6,510,898 Bl
REJECTIONS
Mar. 30, 1954
Jan.28,2003
I. Claims 1, 4-6, 12, and 16 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Miller.
II. Claims 1, 5-8, and 12-16 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Buytaert.
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Application 12/821,498
DISCUSSION
Rejection I: Anticipation by Miller
Appellant argues for patentability of claims 1, 4-6, 12, and 16 subject
to this ground of rejection as a group. Appeal Br. 4-5. We select claim 1 as
representative of this group, and the remaining claims in the group stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Miller discloses the system called for in
claim 1. Final Act. 2. In particular, the Examiner finds:
Id.
Miller discloses a first tubular (1) string (col. 2, lines
40-54) having a plurality of unique inner profiles (12, 11, 10;
col. 3, lines 47-53) disposed at an inner surface thereof; and a
plurality of second tubular (19, 16) tools (col. 6, lines 26-30),
each having a unique outer profile (20, 30; dogs and keys)
disposed at an outer surface thereof, being runnable within the
first tubular ( 1 ), the tubular positioning system being
configured such that each of the plurality of second tubular (19,
16) tools is prevented from passing it's [sic] unique inner
profiles and capable of passing the unique inner profiles not
intended to be engaged with.
Miller discloses each of the plurality of unique outer
profiles (key length) is configured to engage with a
complementary unique inner profile (slot length) and to not
engage with a non-complementary unique inner profile (col. 6,
lines 27-38).
Appellant contests the Examiner's finding that Miller anticipates
claim 1, asserting that
not disclosed by Miller are limitations of independent claim[] 1
... that require each of the unique outer profiles on the second
tubulars be dimensionally configured to be engagable with no
more than one (claim 1) . . . of the unique inner profiles on the
first tubular.
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Application 12/821,498
Appeal Br. 4. Appellant submits "[t]he claims now require the outer profile
be dimensionally configured to be engagable with just one of the inner
profiles." Id. at 5 (emphasis omitted). Appellant contends that Miller does
not anticipate claim 1 because, in Miller's system, "it is not the dimensions
of the profiles themselves that prevent more than one complementary profile
be engagable therewith but it is the relative location of the profile along a
tool string." Id. Appellant further argues, "Claim[] 1 ... do[ es] not require
the positioning of the largest unique inner profile at the lowest position
because everyone [sic] of the unique inner profiles is dimensioned to be
engagable with no more than one (claim 1) ... of the unique outer profiles."
Reply Br. 2-3. According to Appellant, the portion of Miller cited by the
Examiner
strongly suggests that a key 22 is dimensioned to fit within more
than one of the slots 11 since so much care must be taken to
position them along the string in order of their relative size to
prevent a key from prematurely engaging with one of the
plurality of slots that are larger than the key.
Appeal Br. 5.
Appellant's arguments are not commensurate with the scope of claim
1. As stated by our reviewing court, "the name of the game is the claim." In
re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). It is well established
that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671F.2d1344, 1348 (CCPA 1982). Notably, claim
1 requires "each unique outer profile being dimensionally configured to be
engagable [sic] with no more than a single one of the plurality of unique
inner profiles" but does not preclude any role of the positioning of the inner
profiles in preventing engagement of each outer profile with more than one
inner profile, nor does claim 1 exclude a system in which the largest unique
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Appeal2014-003161
Application 12/821,498
inner profile of the plurality of unique inner profiles is disposed at the lowest
position along the first tubular. Indeed, claim 1 does not place any
restrictions on the relative size and positioning of the unique inner profiles.
Contrary to Appellant's arguments, Miller does disclose a system that
anticipates claim 1. Miller discloses a first tubular (pipe string of landing
sections 6) having a plurality of unique inner profiles (grooves 11) each
having a different length, with "the longest of the grooves [being] located at
the lower station in the well string of pipe and ... the grooves progressively
shorten[ing] at progressively higher landing sections within the string."
Miller, col. 2, 11. 40-50; col. 3, 11. 47-57. Once again, claim 1 does not place
any restrictions on the relative size and positioning of the unique inner
profiles. Miller also discloses a plurality of second tubulars (tools 16) each
having a unique outer profile (portions 30 of keys 22) runnable in the first
tubular (string of landing sections 6), with each unique outer profile (key
portion 30) having "substantially the same length as the slot [groove 11]
within which [it is] to seat." Id., col. 5, 11. 26-33, 69-73; col. 6, 11. 26-36.
Each of Miller's unique outer profiles (key portion 30) is dimensionally
configured to be engageable with no more than one groove 11 of the string
of landing sections 6. This is the case because when each tool 16 is lowered
into the string, its key portion 30 will pass by all grooves 11 having
insufficient lengths to permit seating and will engage (i.e., seat in) the first
groove 11 it encounters of sufficient length to permit such seating and, once
seated, tool 16 and its key portion 30 will be prevented from further
downward movement until the tool is purposefully removed from the pipe
string. See id., col. 3, 11. 38-62; col. 6, 11. 31-39. Thus, each key portion is
dimensionally configured to be engageable with the first groove it
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Application 12/821,498
encounters of sutlicient length to permit seating and is dimensionally
configured not to be engageable with the grooves of insufficient length to
permit seating, and not to be engageable with the longer grooves disposed
lower than the first groove of sufficient length (such that, in use of the
system, each key portion is engageable with no more than one groove).
For the foregoing reasons, Appellant's arguments do not apprise us of
error in the Examiner's rejection of claim 1 as anticipated by Miller.
Accordingly, we sustain the rejection of claim 1 and claims 4-6, 12, and 16,
which fall with claim 1, as anticipated by Miller.
Rejection II: Anticipation by Buytaert
Appellant argues for patentability of claims 1, 5-8, and 12-16 subject
to this ground of rejection as a group. Appeal Br. 6-7. We select claim 1 as
representative of this group, and the remaining claims in the group stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Buytaert discloses the system called for in
claim 1. Final Act. 3. In particular, the Examiner finds:
Buytaert discloses a plurality of unique inner profiles (5-
5") or slots (col. 3, lines 47-50) along an inner surface of a first
tubular; sequentially running each of a plurality of second
tubulars (10, 7) having unique outer profiles or spring loaded
keys thereon within the first tubular; and selectively passing or
engaging each of the plurality of unique inner profiles with each
of the unique outer profiles, the passing allowing longitudinal
passage of the one of the plurality of second tubulars thereby
and the engaging longitudinally preventing passage of the one
of the plurality of second tubulars thereby.
Buytaert discloses in figure 4 the axial extension of the
key (15) engages the lowermost surface of the spiral slots (5-
5").
Buytaert discloses the second tubulars (10, 7) are
whip stocks for diverting tools through a window ( 1 W).
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Application 12/821,498
Id.
Appellant contests the Examiner's finding that Buytaert anticipates
claim 1, asserting "[Buytaert,] column 3, lines 47-50, actually supports the
fact that the profiles of Buytaert are not dimensioned to be engagable with
no more than one (claim 1) ... of the unique inner profiles on the first
tubular." Appeal Br. 6 (emphasis omitted). Appellant contends that
Buytaert does not anticipate claim 1 because:
[T]he system of Buytaert also relies upon the relative
positioning of a plurality of slots 5, 5', 5" along the inside of a
first tubular 1 (Figure 6), and the relative positioning of keys 15
on second tubulars 10 runnable within the first tubular 1 (Figure
4), to prevent the keys 15 from prematurely engaging with one
of a plurality of the slots 5, 5', 5" with which the keys 15 are
engagable.
Id. (emphasis omitted). Citing Buytaert, column 3, lines 57-65, Appellant
further contends that "Buytaert hereby is strongly suggesting that any one of
the keys will fit into all slots that are wider than that one key." Id. (emphasis
omitted).
For similar reasons to those discussed above, Appellant's arguments
are not commensurate with the scope of claim 1, and, thus, do not show error
in the Examiner's rejection. To reiterate, claim 1 requires "each unique
outer profile being dimensionally configured to be engagable [sic] with no
more than a single one of the plurality of unique inner profiles" but does not
preclude any role of the positioning of the inner profiles in preventing
engagement of each outer profile with more than one inner profile, nor does
claim 1 exclude a system in which the largest unique inner profile of the
plurality of unique inner profiles is disposed at the lowest position along the
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Application 12/821,498
first tubular. Indeed, claim 1 does not place any restrictions on the relative
size and positioning of the unique inner profiles.
Contrary to Appellant's arguments, Buytaert does anticipate claim 1.
Buytaert specifically discloses that "any one slot will preferably be of
narrower width or profile than the slot immediately below it." Buytaert, col.
3, 11. 59-61; see Ans. 4 (citing Buytaert, col. 3, 11. 58-65). Buytaert adds
that "the slot first engaged by the key on the locating tool being inserted will
only be engaged if the profile of the key and slot fit, and larger keys
intended for positioning further down the casing string will not engage with
narrower slots at the upper levels." Buytaert, col. 3, 11. 58-65. Therefore,
the largest key (unique outer profile) is dimensionally configured to be
engageable only with the widest slot (unique inner profile). Likewise, the
smallest key (unique outer profile) is dimensionally configured to be
engageable only with the narrowest slot (unique inner profile) because, once
engaged, the locating tool with the narrowest width key will not travel
further down the casing string. Buytaert discloses that "each positioning
guide has a unique profile for selectively receiving a matching profile key of
a downhole tool, the guides for each key having a configuration which
controls the depth and rotational position of its matching key." Id., col. 1, 11.
59-63; see also id., col. 2, 11. 22-25 (emphasizing that "each key guide only
allows engagement of a particular key, such that the profile of the key only
fits within the profile or width of the key guide such as the slot"); Fig. 6.
Thus, Appellant's arguments do not apprise us of error in the
Examiner's rejection of claim 1 as anticipated by Buytaert. Accordingly, we
sustain the rejection of claim 1 and claims 5-8, and 12-16, which fall with
claim 1, as anticipated by Buytaert.
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Appeal2014-003161
Application 12/821,498
DECISION
The Examiner's decision rejecting claims 1, 4-6, 12, and 16 under
35 U.S.C. § 102(b) as being anticipated by Miller is AFFIRMED.
The Examiner's decision rejecting claims 1, 5-8, and 12-16 under
35 U.S.C. § 102(b) as being anticipated by Buytaert is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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