Ex Parte Bailey et al

Patent Trial and Appeal Board

Oct 27, 2016

11754529 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111754,529 0512912007
39703 7590
C JAMES BUSHMAN
1001 West Loop South
Suite 810
HOUSTON, TX 77027
10/27/2016
FIRST NAMED INVENTOR
Andyle Gregory Bailey
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.
V&M-3 7573
EXAMINER
STODOLA, DANIEL P
ART UNIT PAPER NUMBER
3679
MAILDATE DELIVERY MODE
10/27/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDYLE GREGORY BAILEY and
STEVEN C. LANGFORD
Appeal2014-005029
Application 11/754,529 1
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andyle Gregory Bailey and Steven C. Langford (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting
claims 1-14 and 24--29.2 We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
According to Appellants, the real party in interest is V AM USA, LLC.
Appeal Br. 3 (filed Oct. 12, 2012).
2 Claims 15-23 are withdrawn. Id. at 5.
Appeal2014-005029
Application 11/754,529
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants' invention "relates to an oilfield threaded connection in
which the thread load flank is at a slightly negative angle, and the torque
shoulder is at a similar negative angle." Spec. 1, 11. 8-10.
Claims 1, 10, and 26-29 are independent. Claim 1 is illustrative of
the claimed invention and reads as follows:
1. A threaded oilfield tubular connection, comprising:
a box connector having internal threads and a box torque
shoulder not forming part of said internal threads;
a pin connector having external threads for mating
engagement with the internal threads and a pin torque shoulder
for engagement with the box torque shoulder when the
connection is made up;
each of the external threads and the internal threads
having a thread load flank which is at a negative angle with
respect to a central axis of the connection; and
a stab flank;
and each of the box torque shoulder and the pin torque
shoulder are at a negative angle with respect to a central axis of
the connection.
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Application 11/754,529
REJECTIONS
The following rejections are before us for review: 3
I. The Examiner rejected claims 1--4, 8-14, 26, and 27 under 35
U.S.C. § 102(b) as anticipated by Tung (US 4,795,200, iss. Jan.
3, 1989).4
II. The Examiner rejected claims 5-7, 24, and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over Tung.5
III. The Examiner rejected claims 28 and 29 under 35 U.S.C.
§ 103(a) as being unpatentable over Tung and Klementich (US
5,462,315).6
ANALYSIS
Rejection I
As to independent claims 1, 26, and 27, the Examiner finds that
Tung's "step up to the right of numeral (18)" on box 10 and pin 12,
constitute the claimed "box torque shoulder" and "pin torque shoulder,"
3 The rejection under 35 U.S.C. § 112, second paragraph, of claims 1-9,
24, and 25, as being indefinite, is withdrawn. See Appeal Br. 6; Ans. 3.
4 Claims 1--4, 8, and 9 were made part of this rejection in a proper new
ground of rejection presented by the Examiner in the Subsequent Examiner's
Answer, mailed Nov. 26, 2013 ("Ans."). See Ans. 5. We agree with
Appellants that the Examiner's Answer (mailed Sept. 30, 2013) and
Subsequent Answer are identical. See Subsequent Reply Brief 1 (filed Dec.
19, 2013).
5 This rejection is a proper new ground of rejection presented by the
Examiner in the Subsequent Examiner's Answer. See Ans. 5.
6 Claims 1-9, 24, and 25 were made part of Rejections I and II,
respectively, in the Examiner's new grounds of rejection in the Subsequent
Examiner's Answer. See id.
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Application 11/754,529
respectively. Ans. 6 (citing Tung, Fig. 1 ); see also id. at 11, 12. The
Examiner further finds that "each of the box torque shoulder and the pin
torque shoulder are at a negative angle with respect to a central axis of the
connection." Ans. 6 (citing Tung, Fig. 1 ).
In contrast, with respect to independent claim 10, the Examiner finds
that Tung's "drop off to the left of step area (18)" on box 12 and pin 10,
constitute the claimed "box torque shoulder" and a "pin torque shoulder,"
respectively. Ans. 8 (citing Tung, Fig. 1 ). The Examiner further finds that
"each of the box torque shoulder and the pin torque shoulder are at an angle
with respect to a central axis of the connection ... with less than a 5°
variance between the load flank and the torque shoulder on the respective
pin connector or box connector. Id. at 9 (citing Tung, Fig. 1 ).
Thus, the Examiner appears to find that the claimed "box torque
shoulder" and "pin torque shoulder" can be either the right side or the left
side of step area 18 ofTung's box 12 and pin 10, respectively.
Tung discloses, inter alia, a tubular connection including a box
member 12, a pin member 10, and thread sets 14, 16 with intermediate step
area 18 there between. Tung, col. 3, 11. 10-16, Fig. 1.
Although we appreciate that intermediate step area 18 includes a "step
up" to the right of index number 18, and thus constitutes a "shoulder,"7 we
do not agree with the Examiner that the "drop off' to the left of index
number 18 likewise constitutes a "shoulder." See Tung, Fig. 1. Rather, we
7 We agree with Appellants that an ordinary and customary meaning of
the term "shoulder" is "the area of an item or object that serves as an
abutment." Reply Br. 12 (citing FreeOnlineDictionary ).
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Appeal2014-005029
Application 11/754,529
agree with Appellants that what appears to the Examiner as a "drop off' to
the left of index number 18 is actually an engaged thread of thread sets 14,
16. See Reply Br. 9 (filed Nov. 21, 2013). Although a drawing teaches all
that it reasonably discloses and suggests to a person of ordinary skill in the
art, it is not clear from Tung's Figure 1, where the engaged thread of thread
sets 14, 16 ends and the "drop off," i.e., shoulder, begins. See In re
Aslanian, 590 F.2d 911, 914 (CCPA 1979). We do not agree with the
Examiner that the area to the left of index number 18 necessarily forms an
abutment different from an engaged thread of thread sets 14, 16, as explicitly
required by independent claim 1 ("box torque shoulder not forming part of
said internal threads"). As such, the Examiner's reliance on the area to the
left of index number 18 in Tung' s Figure 1 as the claimed "box torque
shoulder" and "pin torque shoulder" is based on speculation, and is thus
deficient. Moreover, with respect to independent claims 26 and 27, we do
not interpret the area to the left of index number 18 in Tung' s Figure 1 as
both a "shoulder" and a thread, because doing so would mean that one
feature disclosed in the prior art would correspond to two claim elements,
and we construe separate claim terms as reciting separate structures. See
Engel Indus., Inc. v. Lodiformer Co., 96 F.3d 1398, 1404---05 (Fed. Cir.
1996).
As to Tung' s "step up" located to the right of index number 18,
although we appreciate that it constitutes a "shoulder," i.e., an abutment
between box 12 and pin 10, we do not agree with Examiner's finding that it
is necessarily at a "negative angle," as called for by claims 1, 26, and 27.
See Ans. 6, 11, and 12; see also id. at 27. Although Tung's Figure 1 shows
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Application 11/754,529
clearly that thread sets 14, 16 are angled, the "step up" located to the right of
index number 18, is not clearly shown as angled. Therefore, we agree with
Appellants that a person of ordinary skill in the art, when viewing Tung' s
Figure 1, could reasonably "assume that the angle[] ... [of] the shoulder to
the right of (18) ... [is] at a 90° angle to the long axis of the connection."
Reply Br. 11 (emphasis added). In other words, it is not clear from Tung's
Figure 1 whether the "step up" located to the right of index number 18 forms
a negative angle or a 90° angle to the long axis of the connection. As such,
the Examiner's finding is based on speculation, and is thus deficient.
Moreover, because it is not clear from Tung's Figure 1 whether Tung's "step
up" located to the right of index number 18 is angled, or by how much
relative to angled thread sets 14, 16, Tung also fails to disclose a "less than a
5° variance between the load flank and the torque shoulder," as called for by
independent claim 10.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(b) of independent claims 1, 10, 26, and 27,
and their respective dependent claims 2--4, 8, 9, and 11-14, as anticipated by
Tung.
Rejections II and III
The Examiner's modification of Tung and use of Klementich' s
disclosure does not remedy the deficiency of Tung as described supra. See
Ans. 13-18. Hence, for the same reasons as discussed, we do not sustain the
rejections under 35 U.S.C. § 103(a) of claims 5-7, 24, and 25 as being
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Application 11/754,529
unpatentable over Tung and of claims 28 and 29 as being unpatentable over
Tung and Klementich.
SUMMARY
The Examiner's decision to reject claims 1-14 and 24--29 is reversed.
REVERSED
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