SHELL OIL COMPANY

Patent Trials and Appeals Board

Nov 3, 2020

14774559 - (D) (P.T.A.B. Nov. 3, 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.
14/774,559 09/10/2015 Derk Lucas KLOMPSMA TS9827-US-PCT 9096
23632 7590 11/03/2020
SHELL OIL COMPANY
P O BOX 576
HOUSTON, TX 77001-0576
EXAMINER
JARIWALA, CHIRAG
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
Shelldocketing@cpaglobal.com
USPatents@Shell.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DERK LUCAS KLOMPSMA and LUBBERTUS LUGTMEIER

Appeal 2019-005984
Application 14/774,559
Technology Center 3746
Before JENNIFER D. BAHR, JILL D. HILL, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 8–10, and 12. Appeal Br. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Shell Oil
Company. Appeal Br. 2.
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Application 14/774,559

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CLAIMED SUBJECT MATTER
The application is titled “Device for Pumping Fluid from a Wellbore.”
Spec. 1. Claims 1 and 12 are independent. Appeal Br. 8–10 (Claims App.).
Claim 1, reproduced below and with emphasis added to two limitations
central to our analysis, is illustrative of the claimed subject matter:
1. A pump device for pumping fluid from a wellbore,
comprising:
- a pump chamber having a volume expandable to receive
a first fluid volume;
- a piston member arranged in the pump chamber, the
piston member axially moveable between a first piston position
and a second piston position;
- a fluid conduit adapted for connection to a surface pump
for applying a selected fluid pressure increase in the fluid conduit
to move the piston member from the first piston position to the
second piston position;
- a storage chamber having a volume expandable to
receive the first fluid volume, the storage chamber having a
reciprocating member, the reciprocating member moveable from
a first member position to a second member position responsive
to hydraulic pressure;
- an inlet channel connecting the pump chamber to the
storage chamber;
- a first valve arranged in the inlet channel for allowing
fluid flow from the pump chamber to the storage chamber when
the piston member moves from the first piston position to the
second piston position and for preventing fluid flow from the
storage chamber to the pump chamber;
- an outlet channel connecting the storage chamber to the
fluid conduit;
- a second valve arranged in the outlet channel for
allowing fluid flow from the storage chamber to the fluid conduit
when the piston member moves from the second piston position
to the first piston position and for preventing fluid flow from the
fluid conduit to the storage chamber;
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- a fluid inlet for fluid communication between the
wellbore and the pump chamber; and
- a third valve arranged in the fluid inlet for allowing fluid
flow from the wellbore to the pump chamber when the piston
member moves from the second piston position to the first piston
position and for preventing outflow of fluid from the pump
chamber to the wellbore.
Appeal Br. 8 (Claims App., emphases added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Holland US 4,611,974 Sept. 16, 1986
Roe US 7,401,623 B2 July 22, 2008
Pardey US 8,272,457 B2 Sept. 25, 2012
Hansen US 2013/0251547 A1 Sept. 26, 2013

REJECTIONS
(1) The Examiner rejects claims 1–5, 8, and 12 as unpatentable under
35 U.S.C. § 103(a) over Holland in view of Roe. Final Act. 2.
(2) The Examiner rejects claim 9 as unpatentable under 35 U.S.C.
§ 103(a) over Holland in view of Roe and Hansen. Id. at 6.
(3) The Examiner rejects claim 10 as unpatentable under 35 U.S.C.
§ 103(a) over Holland in view of Roe and Pardey. Id. at 7.
OPINION
I. Rejection of Claims 1–5, 8, and 12
The Examiner rejects claims 1–5, 8, and 12 as being unpatentable
over Holland in view of Roe. Final Act. 2.

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a. Issues
The primary issues before us are:
(1) Whether Holland discloses the claimed “outlet channel connecting
the pump chamber to the storage chamber;” and
(2) Whether a skilled artisan would have modified Holland’s “outlet
channel” to include the claimed “second valve” based on Roe’s
teachings.

b. Examiner’s Rejection
In rejecting independent claim 1, the Examiner finds that Holland
discloses the claimed limitations with the exception of the claimed “second
valve.” See Final Act. 3–4. The Examiner references Holland’s Figure 1 in
finding that Holland discloses the majority of the claimed features. See id.
We reproduce Holland’s Figure 1, below:
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Figure 1 “is a diagram, in somewhat schematic form, of the hydraulically
operated well pump system of [Holland’s] invention.” Holland, 5:56–58.
The Examiner finds that Holland’s Figure 1 discloses, inter alia, pump
device 10 comprising:
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(1) pump chamber 62 and piston member 52 arranged in pump
chamber;
(2) fluid conduit 24 adapted to connect to surface pump 115;
(3) storage chamber 84 having volume 98 and reciprocating
member 96 movable from a first member position (left) to a
second member position (right);
(4) inlet channel 72 connecting pump chamber 62 to storage
chamber 98 and first valve 70 arranged in inlet channel 72;
and
(5) outlet channel (26, 38) “connecting the storage chamber (98)
to the fluid conduit (24).”
Final Act. 3 (citations omitted).
The Examiner acknowledges that Holland does not explicitly disclose
the claimed “second valve,” and relies on Roe for teaching “a double acting
valve unit . . . arranged between the fluid reservoir (20) and pump (12)
which can be fitted inside of the tubing or conduit.” Id. at 4 (citing Roe Fig.
1, 3:4–6). The Examiner proposes to modify Holland’s “outlet channel” (26,
38) “to incorporate a valve means as taught by Roe as a second valve in
order to prevent overflow and maintain pressure in the pump device, as
recognized by Roe” at column 3, lines 4–11. Id.; see also Ans. 5 (clarifying
that the proposed modification is to Holland’s “outlet channel” (26, 38)). In
the Answer, the Examiner further explains that “us[ing] the valve of Roe in
the outlet channel (26+38) of Holland is to prevent the overflow and
maintain the pressure in the pump device” (Ans. 5 (citing Roe, 3:4–11)) and
that “it is necessary to maintain the overflow and the fluid pressure in the
pump system for the purpose of preventing the possibility of cavitation” (id.
at 6).
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In rejecting independent claim 12, the Examiner relies on the
“modified pump device of Holland and R[oe]” for teaching “all the
structural limitations as set forth in claim 12.” Final Act. 6. The Examiner
acknowledges that this modified device of Holland and Roe “does not
explicitly teach the method” of claim 12, but determines that because the
modified device meets all the structural limitations of claim 12, it would
necessarily perform the claimed method. Id.

c. Appellant’s Arguments
In contesting the rejection, Appellant presents two arguments that we
find persuasive.
First, Appellant argues that Holland’s “outlet channel” (26, 38) does
not “connect[] the storage chamber to the fluid conduit.” Appeal Br. 6.
Second, Appellant argues that Roe’s teaching of a valve would not
lead a skilled artisan to arrive at the claimed “second valve.” See id. at 7
(“Holland and Roe does not teach, suggest, or motivate a person of ordinary
skill in the art to arrive at the pump device of claim 1”); see also id. at 4
(“Even if the second valve was the only distinction over Holland, Applicant
does not find teaching or suggestion in Roe’s valve between a fluid reservoir
in a vehicle and a pump to overcome that deficiency in Holland.”).

d. Analysis
First, Appellant asserts that Holland does not disclose “an outlet
channel connecting the storage chamber to the fluid conduit.” See Appeal
Br. 6 (“Holland teaches to use separate fluid conduits”); see also id. (“there
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is nothing [in Holland] suggesting that conduit 24 and conduit 26 can be in
fluid communication”).
We agree with Appellant.
We infer from Appellant’s argument that claim 1 should be
interpreted to require that “connecting the storage chamber to the fluid
conduit” requires the “outlet channel” to be in fluid communication with the
“fluid conduit.” See Appeal Br. 6 (arguing that Holland’s “fluid conduit” 24
and Holland’s “outlet channel” 26 are not “in fluid communication”). The
Examiner agrees with this interpretation. See Ans. 7 (finding that “outlet
conduit” 26 is in fluid communication with “fluid conduit” 24 in explaining
that “outlet conduit (26), through which wellbore fluid flows, is present
within the fluid conduit (24)”). This interpretation is also consistent with the
Specification. In particular, the Specification describes,
With the device and the method of the invention it is
achieved that the fluid conduit serves both for driving the device
to perform the pump cycles, and for discharging fluid that is
pumped out of the wellbore. The ability to use a single fluid
conduit for these two functionalities obviates the need to install
and operate separate fluid conduits for driving the downhole
pump and for discharging the pumped fluid, as is the case in the
prior art.
Spec. 3:14–22 (emphasis added); see also id. at Fig. 2 (depicting fluid
conduit 20 in fluid communication with storage chamber 52 via outlet
channel 64).
Turning to Holland, and applying the agreed-upon claim construction,
the Examiner relies on Holland’s outer driving fluid conduit 24 for satisfying
the claimed “fluid conduit” and Holland’s “inner production fluid conduit”
26 for satisfying the claimed “outlet channel.” See Final Act. 3 (finding
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Holland’s “outlet channel (26 + 38) connecting the storage chamber (98) to
the fluid conduit (24)”). We agree with Appellant, however, that Holland’s
“outlet channel” (26, 38) is not in fluid communication with Holland’s “fluid
conduit” 24. See Appeal Br. 6. Notwithstanding the Examiner’s position to
the contrary (see Ans. 7), Holland is clear in its disclosure that the driving
fluid (present in Holland’s outer driving fluid conduit 24) is separate from
the production fluid present in Holland’s inner production fluid conduit 26.
See, e.g., Holland 5:18–21 (“The downhole pump advantageously utilizes a
disposable hydraulic fluid which may be of higher density than the
production fluid, such as water, and maintains the driving fluid isolated from
the production fluid”) (emphasis added); see also, e.g., id. at 7:17–20 (“The
first piston 50 is slidably disposed in the housing 42 and divides the housing
into a production fluid transfer chamber 54 and a driving fluid transfer
chamber 56”) (italicized emphasis added). Accordingly, Holland’s “outlet
channel” (26, 38) is divided and isolated from Holland’s “fluid conduit” 24,
and does not “connect” Holland’s “storage chamber” 98 to Holland’s “fluid
conduit” 24 as required by the claims. For at least this reason, we do not
sustain the Examiner’s rejection of claims 1 and 12.
Moreover, we reverse the Examiner’s rejection of claims 1 and 12
because we are not persuaded that a skilled artisan would have added Roe’s
valve to Holland’s “outlet channel” (26, 38) for the purpose of “maintain[ing
Holland’s] overflow and fluid pressure in the pump system.” Ans. 6; see
also Final Act. 6 (relying on “the modified device of Holland and R[oe]”
for performing the method of claim 12). The Examiner’s proposed
modification is not supported by the record.
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As an initial matter, and for clarity of record, we understand that
pump cavitation occurs on the suction, or inlet, side of a pump. Because the
Examiner proposes to locate Roe’s valve in Holland’s “outlet channel” (26,
38), which is located on the suction side of chamber 98, we also understand
that the Examiner proposes to reduce cavitation that may occur within
chamber 98 due to the pumping of production fluid (to delivery conduit 102)
via reciprocation of piston 96. See Holland, Fig. 1.
Even if pump cavitation was a problem that Roe’s valve could solve,
however, Holland’s system already has structure that maintains pressure
within chamber 98. Specifically, Holland provides for a “production fluid
delivery conduit 102 . . . in communication with the chamber 98 and has a
minimum pressure valve 104 interposed therein for maintaining a minimum
pressure in chamber 98 in response to the reciprocation of the piston 96.”
Holland, 8:37–41 (italicized emphasis added); see also id. at Fig. 1
(depicting pressure valve 104 connected to chamber 98). In addition to
valve 104, Holland also discloses accumulator 106 for maintaining a
minimum pressure within chamber 98. See id. at 8:45–47. (“The chambers
98 and 100 may be maintained at a predetermined minimum pressure by
accumulators 106 and 108, respectively”); see also id. at Fig. 1 (depicting
accumulator 106 connected to chamber 98 with unlabeled check valve
interposed between the structures).
Because Holland’s pump device 10 already has structure for
maintaining the pressure within chamber 98, we are not persuaded that a
skilled artisan would have added Roe’s valve within Holland’s “outlet
channel” (26, 38) for achieving a similar purpose.
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As to the Examiner’s additional reasoning that the proposed
modification would also “maintain overflow” (see Ans. 6), it is not clear to
us what, exactly, overflow is being maintained. We presume that the
overflow occurs with Holland’s production fluid, but the Examiner fails to
explain where such overflow condition would occur for us to consider. See
generally id.; see also generally Final Act.
For these reasons, we do not sustain the rejection of independent
claim 1 nor the rejection of dependent claims 2–4, and 8, which depend from
claim 1 and whose rejection suffers from the same flawed analysis. See
Final Act. 4–5. Further, the rejection of claim 12 relies on the structure
resulting from the combination of Holland and Roe discussed above (id. at
6) and, thus, also suffers from the same flawed analysis. In sum, we do not
sustain the rejection of claims 1–5, 8, and 12 as unpatentable over Holland
and Roe.

II. Rejection of Claims 9 and 10
The rejections of dependent claims 9 and 10 inherit the same
infirmities discussed above in connection with independent claim 1. See
Final Act. 17. For the same reasons that we reverse the rejection of claims
1–5, 8, and 12, we also reverse the rejections of claims 9 and 10.

CONCLUSION
The Examiner’s rejections are reversed.

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Application 14/774,559

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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–5, 8, 12 103 Holland, Roe 1–5, 8, 12
9 103 Holland, Roe,
Hansen
9
10 103 Holland, Roe,
Pardey
10
Overall
Outcome
1–5, 8–10, 12

REVERSED