Ex Parte Avant et al

Patent Trial and Appeal Board

Apr 18, 2013

11713183 (P.T.A.B. Apr. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARCUS A. AVANT and RAFAEL RAMIREZ
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Appeal 2011-002251
Application 11/713,183
Technology Center 3600
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Before: PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002251
Application 11/713,183

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
10.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The Invention
Claim 1 is representative of the subject matter on appeal, and is
reproduced below:
1. An annular seal device comprising:
a mandrel,
at least one cone axially moveable on the
mandrel;
at least one metal primary sealing element
having a frustoconical outer surface and a
frustoconical inner surface and one or more sealing
surfaces that are entirely metal;
at least one contact feature at the at least one
cone and operably engageable with the at least one
sealing element;
at least one of a blocking element and a
resilient member at the mandrel, the at least one of
a blocking element and a resilient member
supporting a blocking surface in opposition to the
at least one contact feature.

1 Appellants elected not to appeal the rejections of claims 15-19, and
therefore, these claims are considered withdrawn from the appeal. App. Br.
2. We suggest that the Examiner cancel these claims upon return of
jurisdiction of this application to the Examiner. See Ex Parte Ghuman, 88
USPQ2d 1478, 1480 (BPAI 2008) (precedential), MPEP § 1215.03.
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The Rejections and Evidence Relied Upon
The following rejections are before us on appeal:
I. Claims 1-10 under 35 U.S.C. § 102(b) as anticipated by Harris (US
4,281,840; iss. Aug. 4, 1981).
II. Claims 1-10 under 35 U.S.C. § 103(a) as unpatentable over Harris and
Hanson (US 4,127,168; iss. Nov. 28, 1978).

OPINION
I. Claims 1-10 as anticipated by Harris2
Claim 1 is directed to an annular seal device that includes at least one
metal primary sealing element having one or more sealing surfaces that are
entirely metal.
The Examiner found that Harris discloses an annular seal device that
includes at least one metal primary sealing element (packer shoes 70, 72,
and packer rings 74, 76, 78, 80) having one or more sealing surfaces (packer
shoes 70, 72) that are entirely metal. Ans. 3.
Appellants argue that Harris does not disclose at least one metal
primary sealing element having one or more sealing surfaces that are entirely
metal as claimed because Harris’s packer shoes 70, 72 are not sealing
elements. App. Br. 3-4; Reply Br. 2-3. Specifically, according to
Appellants, Harris discloses only that packer shoes 70 and 72 are employed
to help contain the packer elements, and Harris is silent regarding the packer
shoes 70, 72 providing a seal. Reply Br. 2-3. Rather, Appellants contend,
Harris discloses that the packer elements 74, 76, 78, 80, and 82, which are

2 Appellants argue claims 1-10 as a group, and we select claim 1 as
representative. App. Br. 3-4; Reply Br. 2-3; see 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
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not entirely metal, provide the seal. App. Br. 4 (citing Harris, col. 4, ll. 43-
46).
First, Appellants are correct that Harris’s packer shoes 70 and 72 lend
structural support to the packer elements compressed between them. See
Harris, col. 1, ll. 51-52; fig. 2. However, the fact that Harris’s packer shoes
70 and 72 perform a support function does not preclude them from also
performing a sealing function.
Second, Appellants are also correct that Harris’s packer elements 74,
76, 78, 80, and 82 provide a seal; however, contrary to Appellants’ assertion,
Harris is not silent regarding packer shoes 70 and 72 and sealing. Harris
discloses that a seal is formed by the compression of the packer elements
(packer segments 74, 76, 78, 80, and 82) between mandrel 12, casing wall
122, and packer shoes 70 and 72.3 Harris, col. 4, ll. 43-46; fig. 2.
Consequently, Appellants’ arguments fail to demonstrate error by the
Examiner in the rejection of claim 1. Consequently, we sustain the rejection
of claims 1-10 as anticipated by Harris.

3 The claimed device forms a seal via radial loading of sealing elements 20
and 22. See Spec. para. [0012]. Similarly, in Harris’s device, packer shoes
70 and 72 overshoot the ends of packer rings 74 and 76, respectively, so that
when mandrel 12 is set, packer shoes 70 and 72 contact casing wall 122 of
well bore casing 120 (radial loading). Harris, col. 1, ll. 59-61, 65; col. 2, ll.
54-57; col. 3, l. 68; col. 4, ll. 8-20; fig. 2.
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II. Claims 1-10 over Harris and Hanson4
In the first rejection, the Examiner found that Harris’s packer shoes 70
and 72 correspond to sealing surfaces that are entirely metal as claimed. In
contrast, in the second rejection, the Examiner finds that Harris’s packer
segment 78 is a sealing surface as claimed except that it is not entirely metal.
Ans. 5-7. The Examiner concludes it would have been obvious to modify
Harris by forming packer segment 78 entirely of metal, as taught by Hanson,
“in order to provide further protected and resilient seals.” Ans. 7.
Appellants contend that the Examiner’s finding that Harris’s packer
segment 78 is not entirely metal demonstrates that Harris is not anticipated
by Harris. App. Br. 4. The first rejection does not rely upon a finding that
packer segment 78 corresponds to a sealing surface as claimed; rather, the
first rejection is based, in part, on the Examiner’s finding that packer shoes
70 and 72 correspond to a sealing surface as claimed. Thus, Appellants’
argument is unconvincing because it is not responsive to the rejection as
articulated by the Examiner.
Appellants present three contentions in support of the argument that a
person of ordinary skill in the art would not have made the proposed
combination. App. Br. 4-6; Reply Br. 3. First, Appellants contend that
Harris considered Hansen’s teachings and in light of those teachings
purposefully elected to form the packer elements of a composition other than
entirely metal. App. Br. 5. Second, Appellants contend that Harris
concluded that forming his packer elements entirely of metal, as taught by
Hansen, would have rendered Harris’s device unsatisfactory for its intended

4 Appellants argue claims 1-10 as a group, and we select claim 1 as
representative. App. Br. 4-6; Reply Br. 3; see 37 C.F.R. § 41.37(c)(1)(vii).
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purpose. Reply Br. 3. Third, Appellants contend that Harris discloses that
composing the packer elements of thermoplastic impregnated asbestos fiber
prevented steam or fluid migration through the packer element to a greater
degree than previously thought possible, and that such disclosure was made
in reference to an entirely metal sealing surface composition as taught by
Hansen. App. Br. 5.
To begin, Appellants’ contentions are not supported by the reference.
Even if we attribute knowledge of Hansen’s disclosure to Harris, Harris does
not make any disclosure that Harris’s selection of the composition of the
packer elements was due to or affected by Hansen’s disclosure. Further,
Harris contains no disclosure that forming the packer elements entirely of
metal would render the device inoperable or otherwise unsatisfactory for its
intended purpose. Nor do Appellants submit evidence that such would be
the case. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Appellant’s
arguments do not take the place of evidence).
We agree that Harris discloses that packer elements comprised of
asbestos fiber impregnated with an intermediate hard thermoplastic and
interwoven with Inconel wire fiber prevent steam or fluid migration through
the packer elements to a much great degree than previously possible. Harris,
col. 1, ll. 37-41; col. 4, ll. 49-53. However, Harris does not make this
disclosure in contrast to Hansen or even to packer elements formed entirely
of metal. Rather, as background, Harris compares the patented invention to
devices employing packer elements of intermediate hard thermoplastics and
those comprised of woven asbestos and Inconel wire. Harris, col. 1, ll. 6-31.
Additionally, Harris does not attribute the superior sealing
characteristics solely to the composition of the packer elements. Rather,
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Harris acknowledges that a number of different design features interact to
form a more effective seal. Harris, col. 4, ll. 47-49.
Appellants’ arguments seem to suggest that Harris was issued a patent
because his device was superior to a device that utilized a sealing surface
entirely of metal such as Hansen’s. That is not the case. Harris was issued a
patent because his device was not anticipated by, or obvious in view of, prior
art devices.
Thus, Appellants’ arguments fail to demonstrate error by the
Examiner in the rejection of claim 1. Consequently, we sustain the rejection
of claims 1-10 as unpatentable over Harris and Hansen.

DECISION
We affirm the Examiner’s decision to reject claims 1-10.
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

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