Halliburton Energy Services, Inc.

Patent Trials and Appeals Board

Sep 8, 2020

15540978 - (D) (P.T.A.B. Sep. 8, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/540,978 06/29/2017 Todd Anthony STAIR 164.2014-IP-093990 U1 US 9084
138627 7590 09/08/2020
Gilliam IP PLLC (Halliburton)
7200 N. Mopac
Suite 440
Austin, TX 78731
EXAMINER
BEMKO, TARAS P
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
09/08/2020 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):
uspto@gilliamip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TODD ANTHONY STAIR
____________

Appeal 2020-001678
Application 15/540,978
Technology Center 3600
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–20. We have jurisdiction over this appeal under
35 U.S.C. § 6(b). We AFFIRM.
In explaining our Decision, we refer to the Specification filed June 29,
2017 (“Spec.”), the Final Office Action mailed May 30, 2019 (“Final Act.”),
the Appeal Brief filed September 11, 2019 (“Appeal Br.”), the Examiner’s

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Halliburton Energy
Services, Inc. Appeal Br. 3.
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Application 15/540,978

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Answer mailed November 13, 2019 (“Ans.”), and the Reply Brief filed
December 31, 2019 (“Reply Br.”).
SUMMARY OF THE INVENTION
Appellant’s claimed invention relates to downhole tools. Spec. ¶ 10.
Claims 1, 8, and 15 are independent. Claim 1, reproduced below from
page 12 (Claims Appendix) of the Appeal Brief, is illustrative of the claimed
subject matter:
1. A valve assembly comprising:
a flapper valve biased to move from a restrained position
to a released position to cover an entry bore;
an activating sleeve retaining the flapper valve in the
restrained position and having a shoulder, wherein the shoulder
comprises an upper face in a radial plane and a frustoconical
lower face;
an upper radial lock mechanism that prevents movement
of the shoulder toward the entry bore and past the upper radial
lock mechanism, wherein the upper radial lock mechanism
comprises an upper lock ring; and
a lower radial lock mechanism positioned axially
between the shoulder and an exit bore when the flapper valve is
in the restrained position, the lower radial lock mechanism
preventing movement of the shoulder toward the exit bore and
past the lower radial lock mechanism until a force threshold is
exceeded, wherein the lower radial lock mechanism comprises
a lower lock ring.

REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Freeman US 4,474,241 Oct. 2, 1984
Kippola US 2014/0299329 A1 Oct. 9, 2014
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REJECTIONS
I. Claims 1–20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Freeman and Kippola.
II. Claims 1–20 stand provisionally rejected on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claims 1–20 of U.S. Patent Application No. 15/542,402.
ANALYSIS
Rejection I – Obviousness based on Freeman and Kippola
In contesting this rejection, Appellant presents arguments for
independent claims 1, 8, and 15 together (see Appeal Br. 7–9) and relies on
the same arguments for dependent claims 2–7, 9–14, and 16–20 (see id.
at 9). We select claim 1 as representative, and claims 2–20 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner finds that Freeman discloses a valve assembly
substantially as recited in claim 1, including, in relevant part, an upper radial
lock mechanism (shear pins 150, shear screw 152) and a lower radial lock
mechanism (split lock ring 156), but “does not explicitly disclose that the
upper radial lock mechanism comprises an upper lock ring.” Final Act. 3.
The Examiner finds that Kippola teaches a retention member in the form of
shear screw 62 and further teaches that “one of ordinary skill in the art will
appreciate that the retention member 62 may be shear pins, lock rings, snap
rings, or any other like component capable of retaining the lower piston in
the initial position.” Id. at 3–4 (citing Kippola ¶ 38). The Examiner
determines that it would have been obvious
to have substituted a lock ring for Freeman’s upper radial lock
mechanism[,] as taught by Kippola. As Freem[a]n teaches the
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Application 15/540,978

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use of a lock ring, the simple substitution of a lock ring for
Freeman’s upper radial lock mechanism would have been
within [the level of] routine skill [in the art]. As the art teaches
that lock rings can be substituted for shear pins and shear
screws, such a simple substitution would have been predictable
with a reasonable expectation of success.
Id. at 4.
Appellant argues that “substituting the shear pins and shear screws in
Freeman with a lock ring would render the Office’s proposed valve
assembly inoperable.” Appeal Br. 8. Appellant asserts that “Freeman uses
shear pins and shear screws for two purposes. The first is to hold the
activating sleeve to the housing. The second use is to maintain the
alignment of the activating sleeve while the sleeve moves down the housing
before contacting the double flapper valve.” Id. According to Appellant,
substituting shear pins and shear screws with a lock ring would
eliminate the rotation control mechanism provided by the shear
pins and shear screws. This [would] allow[] the activating
sleeve to move out of alignment with the fill up flapper during
longitudinal motion down the housing which leads to jamming
of the valve assembly. Thus, without the use of a shear pin or
shear screw as disclosed by Freeman, the valve assembly of
Freeman would be inoperable as a lock ring provides no
mechanism for rotation control.
Id. at 9. The Examiner responds that
Freeman discloses two potential structures (150, 152) that each,
individually, provide the claimed movement prevention, [and] it
would have been within [the level of] routine skill [in the art] to
understand that a split lock ring (as explicitly taught by
Kippola) would only need to be substituted for pins 150 and
that a split ring would still allow the use of guide pins 152
(i.e. the split in the lock ring can accommodate the guide pins
152). Thus, contrary to appellant’s[] arguments, the
substitution of Kippola’s lock ring for Freeman’s pins 150
would in no way prevent the intended function of Freeman.
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Ans. 5. In this regard, Appellant does not persuasively refute the
Examiner’s position.
Freeman discloses that “[a]ctivating sleeve 130 is prevented from
rotating prior to contacting valve assembly 170 by the head 154 of shear
screw 152 riding in slot 100.” Freeman, 5:64–66. Given that the
Examiner’s proposed modification of Freeman would involve replacing only
shear pins 150 with a split lock ring (see Ans. 5), it appears that head 154 of
shear screw 152 would still prevent rotation of activating sleeve 130. Thus,
we are unpersuaded by Appellant’s contention that the proposed
modification of Freeman’s valve assembly would render it inoperable. See
Appeal Br. 8.
Appellant argues that “[t]he current application discloses a variety of
issues associated with the use of shear pins and shear screws in valve
assemblies.” Reply Br. 3. According to Appellant, “incorporating a lock
ring in place of some of the shear pins while maintaining use of the shear
screw, still incurs the operational disadvantages associated with the use of
shear pins and shear screws.” Id. at 4. We are not persuaded by this
argument.
Although the Specification describes that there are drawbacks
associated with shear pins (see, e.g., Spec. ¶ 11), the Specification is silent
as to shear screws. Nevertheless, even assuming, arguendo, that the
described shear pin drawbacks also apply to shear screws, Appellant’s
argument does not identify error in the Examiner’s conclusion of
obviousness. Our reviewing court has recognized that “a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine.” See Medichem, S.A. v.
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Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”).
Appellant has not provided any factual evidence or persuasive
technical reasoning to explain why modifying Freeman’s valve assembly to
replace shear pins 150 with a split lock ring, as taught by Kippola, would
yield anything other than a predictable result, or that doing so in an operable
manner would be beyond the level of ordinary skill in the art, especially
given Kippola’s disclosure that “one o[f] ordinary skill in the art will
appreciate that the retention members 62 may be shear pins, lock rings, snap
rings, or any other like component capable of retaining the lower piston 48
in the initial position.” Kippola ¶ 38. In this regard, the Examiner’s
proposed modification of Freeman does not amount to more than the simple
substitution of one known retention member (i.e., Freeman’s shear pins 150)
for another (i.e., Kippola’s lock ring) or the mere application of a known
technique to a piece of prior art ready for the improvement. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and of
claims 2–20 falling therewith, as being unpatentable over Freeman and
Kippola.
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Rejection II – Non-statutory Double Patenting
The Examiner provisionally rejected claims 1–20 on the ground of
non-statutory double patenting as being unpatentable over claims 1–20 of
Application No. 15/542,402, which is now US 10,633,948 B2, issued
April 28, 2020. Final Act. 7. At least some of the claims relied upon in the
provisional rejection have been amended since the rejection was initially
made by the Examiner. See Application No. 15/542,402, Amdt. (Sept. 24,
2019). We decline to reach this rejection because the claims now relied
upon are not clearly the same as those originally considered by the Examiner
when the rejection was initially made. See Ex parte Jerg, Appeal
No. 2011-000044, at 5–6 (BPAI Apr. 17, 2012) (designated informative)
(“Panels have the flexibility to reach or not reach provisional obviousness-
type double-patenting rejections.”) (citing Ex parte Moncla, Appeal
No. 2009-006448 (BPAI June 22, 2010) (designated precedential)).
CONCLUSION
In summary,
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–20 103 Freeman, Kippola 1–20
1–20 Provisional Non-statutory
Double Patenting2

Overall Outcome 1–20

2 As discussed above, we do not reach this rejection.
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Application 15/540,978

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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)(1)(iv).
AFFIRMED