Ex Parte Buytaert et al

Patent Trial and Appeal Board

Jan 22, 2013

11739284 (P.T.A.B. Jan. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEAN BUYTAERT
and EUGENE EDWARD MILLER
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Appeal 2010-011250
Application 11/739,284
Technology Center 3600
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Before JAMES P. CALVE, JILL D. HILL, and TIMOTHY J. O’HEARN,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-13 under 35 U.S.C. § 103(a) as unpatentable over Harrison (US 4,545,436;
iss. Oct. 8, 1985) and Lanham (US 4,411,552; iss. Oct. 25, 1983). App. Br.
3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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Application 11/739,284

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CLAIMED SUBJECT MATTER
Claims 1 and 9 are independent. Claim 1 is reproduced below:
1. A method of manufacturing a casing centralizer, comprising:
forming a plurality of bow-springs, each having a first end and
a second end; and each having a foot at each end;
forming a first collar and a second collar, each having a
plurality of circumferentially spaced bow-spring aligning slots, each
bow-spring aligning slot configured for receiving a foot on the end of
a bow-spring;
forming at least one extruded through-hole in each collar and
adjacent to each aligning slot by positioning each collar on a
supporting back-up member having an opening aligned with a punch,
and by driving the punch through the collar wall and into the opening,
wherein the diameter of the punch is less than about 80% of a
diameter of the opening on the supporting member; and
tapping each extruded through-hole to threadedly receive a
fastener.

ANALYSIS
Appellants argue claims 1-3, 5-7, 9, 11, and 12 as a group and present
separate arguments for the patentability of claims 4, 8, 10, and 13. App. Br.
7-20. We select claim 1 as representative (see 37 C.F.R. § 41.37(c)(1)(vii)
(2011)) and address Appellants’ arguments for the patentability of claims 4,
8, 10, and 13. The Examiner found that Harrison discloses a method of
making a casing centralizer comprising forming a plurality of bow strings
12, 13, 14, forming a first and second collar 10, 11, and forming at least one
extruded through-hole 26 in each collar adjacent to each aligning slot, but
does not disclose positioning each collar on a supporting back-up member
when extruding through-holes. Ans. 3. The Examiner found that Lanham
discloses forming extruded through holes 16 and tapping each through-hole
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Application 11/739,284

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to threadedly receive a fastener 24 and determined that it would have been
obvious to replace the holes and rivets of Harrison with the extruded hole 16
of Lanham to threadedly receive a fastener of Lanham to minimize the skills
and facilities to assemble a centralizer at the job site. Ans. 4.
Appellants argue that the Examiner has not established a prima facie
case of obviousness because Harrison does not disclose an extruded through-
hole as claimed. App. Br. 11-12. This argument is not persuasive because
the Examiner relied on Lanham to disclose extruding a through-hole 16 and
tapping the through-hole to receive a fastener. Ans. 4, 7; see App. Br. 12.
Appellants argue that the substitution of Lanham’s extruded hole 16 in
Harrison would render Harrison’s centralizer unsatisfactory for its intended
purpose. App. Br. 12. Appellants argue that replacing Harrison’s hole 27
with Lanham’s extruded hole 16 would cause hole 27 to have a flange that
extends outwardly in a way that would prevent the spring member portion
14d from lying against the collar portion 10e or inwardly of the flange in a
way that would increase the distance that the head of the rivet 28 extends
toward the casing. App. Br. 13-14. These arguments are not persuasive
because the test for obviousness is what the combined teachings of the
references would suggest to a skilled artisan and not whether features of a
secondary reference may be combined physically with features of a primary
reference. This argument also is not persuasive because the Examiner
proposes to modify the rivet hole 26 on the collar 10, 11 of Harrison to be an
extruded, threaded hole as taught by Lanham and as claimed. Ans. 8.
Appellants have not explained how such modification renders Harrison’s
centralizer unsuitable for its intended purpose. See Ans. 8-9.
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Application 11/739,284

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Appellants also argue that the opening 27 of Harrison is preferably
slotted to allow the spring member to move axially so that the flange 14c of
the spring member can move within the slot 24 of the collar and so that there
is no shear or stress on the rivet shaft, and that the proposed modification
would change this principle of operation if the hole 27 was replaced with a
threaded extruded through-hole and the rivet was replaced with a threaded
fastener. App. Br. 15-16. This argument is not persuasive for the reasons
discussed supra because the Examiner proposes to modify the hole 26 of the
collar 10 of Harrison with the extruded, threaded hole 16 of Lanham. Ans.
8. We are not persuaded that providing a threaded fastener and extruded,
threaded hole on Harrison’s collar would alter the principle of operation of
Harrison’s centralizer. We sustain the rejection of claims 1-3, 5-7, 9, 11,
and 12.
Claims 4 and 10
Claims 4 and 10 depend from claims 1 and 9 respectively and call for
securing each bow-spring to a radially outwardly disposed surface of each
collar. The Examiner found that “Figure 1 of Harrison depicts each collar
10, 11 is radially outwardly formed thus the inner surface and outer surface
of collars can be considered radially outwardly disposed surface. Hence,
securing bow spring 12, 14 to radially outwardly disposed inner surface of
collars 11, 12 satisfy the claim limitation since the claim does not require
outer surface of each collar.” Ans. 9. Appellants argue that Harrison
“clearly shows that Harrison’s bow springs are secured to an inside or
radially inwardly disposed surface of each collar, as confirmed by reference
to the inside views of the upper collar in Figures 3 and 6, and the cross-
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sectional view in Figure 7.” App. Br. 16-17. We agree. The Examiner’s
interpretation of “radially outwardly disposed surface” to cover inner and
outer surfaces that are disposed in opposing radial directions is unreasonably
broad and inconsistent with the plain meaning of these terms interpreted in
light of Appellants’ Specification, which discloses a centralizer with collars
12, 14 having a radially inwardly disposed surface and a radially outwardly
disposed exterior wall 25 to which bow springs 18 are secured. See Spec. 8,
para. [0032]; Fig. 2. In contrast, Harrison’s bow springs are secured to a
radially inwardly disposed surface of collars 10, 11. Harrison, col. 3, ll. 64-
67; col. 4, ll. 15-17; figs. 1, 6. The Examiner’s interpretation effectively
reads the term “radially outwardly” out of the claims by treating surfaces
that are disposed in radially opposing directions as both being radially
outwardly disposed. As such, we cannot sustain the rejection of claims 4
and 10.
Claims 8 and 13
Claims 8 and 13 depend from claims 1 and 9 respectively and call for
forming the feet of each bow-spring by inwardly bending the ends of the
bow-springs. The Examiner found that Harrison’s bow springs include
inwardly bending feet 14c as shown in Figure 13.1 Ans. 6, 9-10. We agree
with Appellants that Harrison’s bow springs are secured to the inside surface
of collars 10, 11 and include feet (flange 14c) that bend outwardly and away
from the inside surface as shown in Figure 3. App. Br. 20. As such, we
cannot sustain the rejection of claims 8 and 13.

1 Harrison does not have a Figure 13. Harrison, col. 3, l. 64 to col. 4, l. 25.
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DECISION
We AFFIRM the rejection of claims 1-3, 5-7, 9, 11, and 12 and
REVERSE the rejection of claims 4, 8, 10, and 13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRM-IN-PART

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