Ex Parte Carr et al

Patent Trial and Appeal Board

Dec 22, 2015

12681872 (P.T.A.B. Dec. 22, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/681,872 04/06/2010
26722 7590 12/24/2015
OSHA LIANG/MI
TWO HOUSTON CENTER
909 FANNIN STREET, SUITE 3500
HOUSTON, TX 77010
FIRST NAMED INVENTOR
Brian S. Carr
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.
055421216003 8047
EXAMINER
BRANCH, CATHERINE S
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
12/24/2015 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):
DOCKETING@OSHALIANG.COM
bergman@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN S. CARR, BENJAMIN L. HOLTON, and
MICHAEL A. TIMMERMAN
Appeal2014-002054
Application 12/681,872
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 1-20. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision refers to Appellants' Specification (Spec.) filed April 6, 2010,
Appellants' Appeal Brief (Br.) filed July 11, 2013, the Examiner's Answer
(Ans.) mailed October 2, 2013.
2 According to Appellants, the real party in interest is M-I L.L.C. (M-I). Br.
4.
Appeal2014-002054
Application 12/681,872
STATEMENT OF THE CASE
The invention relates to a shaker for separating solids from a drilling
fluid as shown in Appellants' Figure 2B, reproduced below.
110
__ i---160
Appellants' Figure 2B, depicting a cross section of the shaker
201
210
170
The shaker includes a top screening deck 130 and a flow-back pan 160
beneath the top screening deck and divided into a plurality of channels for
receiving an initially separated drilling fluid from the top screening deck.
Spec. if 6. A fluid distribution box 210 includes a plurality of conduits, each
corresponding to one of the plurality of channels such that each channel
delivers a stream of the initially separated drilling fluid to the corresponding
conduit. Id. Each conduit directs a corresponding stream of initially
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separated drilling fluid to a corresponding one of the middle screening deck
140 and the bottom screening deck 150. Id.
As further shown in Appellants' Figures 2A and 3A, reproduced
below, the fluid distribution box 210 includes a plurality of horizontal
partitions 221 and vertical partitions 222 in combination with a cover 201
(removed for illustrative purposes in these figures) to direct the fluid streams
A, C to the middle screening deck and the fluid streams B, D to the bottom
screening deck. Id. at i-f 25.
flG. ;M FIG. 3A
Appellants' Figures 2A and 3A, depicting the fluid distribution box
The Rejections
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection:
A. Claims 1-3, 5, 6, 9-11, 13, 15, and 20 under 35 U.S.C. §
102(b) as anticipated by Bailey;
B. Claims 4 and 12 under 35 U.S.C. § 103(a) as unpatentable
over Bailey in view of Melin;
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C. Claims 7, 14, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Bailey in view of Roff; and
D. Claims 8, 16, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Bailey.
Appellants separately argue the claims in accordance with the following
groupings of claims:
I. Claims 1-3, 5, and 6;
II. Claims 9-11 and 13;
III. Claims 15 and 20;
IV. Claims 4 and 12;
V. Claims 7, 14, 18, and 19; and
VI. Claims 8, 16, and 17.
Accordingly, we serially address Appellants' arguments with respect to the
above groupings belo\x1.
ANALYSIS
Group I: Claims 1-3, 5, and 6
Appellants state that claims 1-3, 5, and 6 stand or fall together. Br. 6.
We select claim 1 to decide the issues raised by Appellants' arguments. 37
C.F.R. § 41.37(c)(l)(iv)(2012).
Independent claim 1 is reproduced below from the Claims Appendix
to Appellants' Brief.
1. A shaker for separating solids from a drilling fluid
compnsmg:
a top screening deck;
a flow-back pan positioned beneath the top screening
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Application 12/681,872
deck for receiving an initially separated drilling fluid from
the top screening deck;
wherein the flow-back pan is divided into a plurality of
channels;
a fluid distribution box disposed at an end of the tlow-
back pan, the fluid distribution box comprising a plurality of
vertical partitions to form a plurality of conduits within the
fluid distribution box;
wherein each channel of the flow-back pan corresponds
to one of the plurality of conduits in the fluid distribution
box and each channel communicates a stream of the initially
separated drilling fluid to the corresponding conduit;
at least one middle screening deck; and
a bottom screening deck;
wherein each conduit routes the stream of initially
separated drilling fluid to a corresponding one of the at least
one middle screening deck and the bottom screening deck.
We sustain the rejection of claim 1 based on the findings of fact,
conclusions of law, and rebuttals to arguments well expressed by the
Examiner in the Final Office Action and the Answer. The following
comments are added for emphasis.
A reference is anticipatory under § 102(b) when it discloses each and
every element of the claimed invention, arranged or combined in the same
way as in the claim. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
The Examiner finds Bailey teaches a vibratory screening apparatus for
removing drilling cuttings from drilling fluids, including a stack of screen
assemblies or decks 8 that are separated by flow directing trays or pans 9.
Ans. 2. The Examiner also finds flow directing trays 9 are divided into a
plurality of feed chutes or channels 71, 72 by lateral divider 68. Id. In
addition, the Examiner finds lateral divider 68 separates a fluid distributor
15 into conduits that correspond to the channels of flow directing trays 9.
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Id. In particular, the Examiner finds Bailey teaches a plurality of vertical
partitions that separate fluid flows as shown in Figures 5A-5C. Id.
Appellants contend that Bailey directs the entire fluid either to one
screen or allows the entire fluid pass by the screen. Br. 11 and 12.
According to Appellants, Bailey fails to provide a mechanism for part of the
fluid to be directed to one screen, while allowing another part to pass to
another screen. Id. Appellants urge that Bailey fails to teach or suggest a
flow-back pan divided into a plurality of channels and a fluid distribution
box comprising a plurality of vertical partitions. Id. In this regard,
Appellants argue that Bailey's flap valves 20 are not vertical nor are they
partitions. Id.
However, as the Examiner notes (Ans. 6), Appellants focus on some
non-anticipating embodiments of Bailey, while ignoring other anticipating
embodiments. In this regard, we note that the embodiment of Bailey's
Figures 4A, 4B, and 5C which cieariy depict a fluid flow divided into three
streams, where one stream is directed from flow-back pan 9' by flapper 20"
in flow distributor 15 to middle screening deck 8", while two other streams
are directed from flow-back pan 9' by flappers 20" in flow distributor 15 to
bottom screening deck 8'". Bailey, 7:16-25 and 8:28-9:15. Further, Bailey
teaches that the flow distributor 15 is formed and arranged into inside and
outside passages 17, 18. Id. These passages are equivalent to Appellants'
plurality of conduits within the fluid distribution box.
In addition, as the Examiner further finds, Bailey teaches the passages
of the flow distributor 15 may be conveniently defined by walls extending
downwardly inside a downwardly extending chamber so as to provide a
lateral subdivision of the chamber providing predetermined proportions of
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Application 12/681,872
the fluid flow. Ans. 6. These walls are equivalent to Appellants' vertical
partitions. Thus, contrary to Appellants' argument, Bailey does provide a
mechanism for separating the initially separated fluid, directing one stream
to the middle screening deck and the other streams to the bottom screening
deck. See Bailey, Fig. 5C. As such, Appellants fail to identify reversible
error in the Examiner's findings in support of the anticipation rejection.
Accordingly, we will sustain the Examiner's rejection.
Group II: Claims 9-11and13
Appellants state that claims 9-11 and 13 stand or fall together. Br. 6.
We select claim 9 to decide the issues raised by Appellants' arguments. 37
C.F.R. § 41.37(c)(l)(iv)(2012).
Independent claim 9 is reproduced below from the Claims Appendix
to Appellants' Brief.
9. An apparatus for distributing an initiaiiy separated driiiing fluid in a
shaker, the apparatus comprising:
a flow-back pan having a plurality of channels; and
a fluid distribution box disposed at an end of the flow-back pan,
the fluid distribution box comprising a plurality of horizontal
partitions and a plurality of conduits, each of the plurality of
horizontal partitions corresponding to one of the plurality of conduits,
and each of the plurality of conduits corresponding to one of the
plurality of channels of the flow-back pan;
wherein each of the plurality of horizontal partitions of the
plurality of conduits is configured to route the initially separated
drilling fluid to a corresponding one of a plurality of secondary
screening surfaces.
We sustain the rejection of claim 9 based on the findings of fact,
conclusions of law, and rebuttals to arguments well expressed by the
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Application 12/681,872
Examiner in the Final Office Action and the Answer. The following
comments are added for emphasis.
Appellants reassert the arguments raised against the Examiner's
rejection of claim 1. Br. 12-13. We have not found these arguments
persuasive for the reasons given above.
Appellants further argue that Bailey fails to show a plurality of
horizontal partitions that correspond to the plurality of conduits, where the
plurality of conduits correspond to the plurality of channels of the flow-back
pan. Br. 13. Appellants assert that while Bailey does disclose horizontal
partitions (flap valves 20), these partitions do not correspond to a plurality of
conduits. Id. Moreover, Appellants assert that because Bailey does not
show a plurality of channels on the flow-back pan, "it [is] logically
impossible for Bailey to have a plurality of horizontal partitions that
correspond." Id.
However, again, AppeUants' arguments ignore the embodiment
depicted in Figures 4A, 4B, and 5C wherein Bailey's horizontal partitions
20", 20"' correspond to flow passages or conduits 17, 18, respectively across
flow distributor 15. See Ans. 6-7. In addition, Bailey's Figures 5A-5C
show the flow directing trays or pans 9 divided into a plurality of channels
corresponding to the flow passages. Id. Appellants fail to address the
Examiner's specific findings as to Bailey's teachings on each of these claim
limitations. No Reply Brief has been filed. As such, Appellants have not
identified reversible error in the Examiner's findings in support of the
anticipation rejection of claim 9. It follows that we will sustain the
Examiner's rejection as to claim 9.
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Group III: Claims 15 and 20
Appellants state that claims 15 and 20 stand or fall together. Br. 6.
We select claim 15 to decide the issues raised by Appellants' arguments. 3 7
C.F.R. § 41.37(c)(l)(iv)(2012).
Independent claim 9 is reproduced below from the Claims Appendix
to Appellants' Brief.
15. A method of separating solids from a drilling fluid comprising:
depositing the drilling fluid onto a top screening deck in a
shaker;
vibrating the shaker;
separating the drilling fluid into an initially separated drilling
fluid component and a first solid component on the top screening
deck;
discharging the first solid component from the shaker;
receiving the initially separated drilling fluid component onto a
flow-back pan comprising a plurality of channels;
dividing the initially separated drilling fluid component into a
plurality of streams defined by the channels on the flow-back pan;
directing each stream of the initiaUy separated driiiing fluid
component in each channel to a corresponding conduit in a fluid
distribution box disposed at an end of the flow-back pan, wherein the
fluid distribution box comprises a plurality of partitions to define each
channel within the fluid distribution box; and
routing each stream of the initially separated drilling fluid
component in each conduit to one of a middle screening deck and a
bottom screening deck in the shaker.
We sustain the rejection of claim 15 based on the findings of fact,
conclusions of law, and rebuttals to arguments well expressed by the
Examiner in the Final Office Action and the Answer. The following
comments are added for emphasis.
Appellants contend that Bailey fails to disclose the step of initially
separating the fluid and then dividing the initially separated fluid. Br. 14.
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Appellants assert that Bailey makes no mention of dividing an initially
separated drilling fluid into a plurality of streams, but instead teaches the
entire fluid stream is sent, undivided, to either the middle screen or the
bottom screen, via the first flap valve. Id.
However, Appellants are directing their attention to Bailey's
embodiments of Figures 2A-3B, 5A, and 5B, where the entire fluid flow is
directed to either the middle screen or the bottom screen. However, even in
these embodiments, Bailey initially separates the fluid from solids using the
upper screening deck 8', divides the fluid flow into a plurality of streams
defined by channels in the flow-back pan 9' (as seen in Figures 5A-5C),
directs each stream into a corresponding passage or conduit in a fluid
distributor 15 disposed at an end of the flow-back pan, and routing each
stream in each passage or conduit to one of a middle screening deck and a
bottom screening deck. We note that claim 15 does not require that some of
the streams are routed to the middie screening deck and others of the streams
are routed to the bottom screening deck. As such, each of Bailey's
embodiments shown in Figures 2A-5C reads on Appellants' claim 15.
Notwithstanding this finding, we note, as did the Examiner, Bailey's
Figure 4A, 4B, and 5C embodiment specifically depicts routing some of the
streams are routed to the middle screening deck and others of the streams are
routed to the bottom screening deck. Ans. 6-7. Accordingly, we are not
persuaded of reversible error in the Examiner's findings in support of the
anticipation rejection of claim 15. We will sustain the Examiner's rejection
of claim 15.
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Group IV: Claims 4 and 12
Appellants state that claims 4 and 12 stand or fall together. Br. 6. We
select claim 4 to decide the issues raised by Appellants' arguments. 37
C.F.R. § 41.37(c)(l)(iv)(2012).
Claim 4 depends from claim 1, and further requires that "the flow-
back pan comprises a flow-back surface having a central upward bend
perpendicular to the fluid distribution box to divide the initially separated
drilling fluid into two streams."
The Examiner relies on the previous findings with regard to Bailey.
The Examiner further finds Melin teaches a feed stream splitter
incorporating a central apex or ridge which divides the feed into two
streams. Ans. 4. The Examiner concludes it would have been obvious to
incorporate such a central apex or ridge into the surface of Bailey's flow
directing tray 9 as an alternative to vertical dividers or walls to create the
channeis directing fluid flow. Id.
Appellants note that Melin is not dealing with an initially separated
stream, but rather is dividing the stream for subsequent processing. Br. 16.
Moreover, Appellants contend that the Examiner has provided no line of
reasoning as to why a skilled artisan would be motivated to incorporate this
initial inverted V-shape into Bailey. Id.
However, Appellants' argument fails to address the basis of the
Examiner's rejection which is a combination of Bailey and Melin. The
Examiner is merely relying on Melin to establish that flows may be divided
by a central upward bend or V-shape ridge as an alternative to the dividers
or walls depicted in Bailey. As Bailey teaches dividing an initially separated
fluid into a plurality of streams in a plurality of channels, it is not necessary
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that Melin teach or suggest this feature. Finally, although Appellants
contend the Examiner has provided no line of reasoning as to why one of
ordinary skill in the art would have been motivated to incorporate Melin's
inverted V-shape into Bailey, we disagree. The Examiner articulates that
Melin's V-shape ridge would act or function in the same manner as Bailey's
divider or walls. Ans. 7. As such, Melin's V-shape ridge and Bailey's
dividers or walls are known functional equivalents, where substitution of one
for the other would have been obvious absent an unexpected result. KSR
Int'! Co. v. Teleflex Inc., 500 U.S. 398, 416 (2007) ("when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.") Appellants have failed to
show that the Examiner's finding of equivalency is erroneous. Therefore,
we are not persuaded of reversible error in the Examiner's obviousness
rejection of ciaim 4. It foiiows that we win sustain this rejection.
Group V: Claims 7, 14, 18, and 19
Appellants state that claims 7, 14, 18, and 19 stand or fall together.
Br. 6. We select claim 7 to decide the issues raised by Appellants'
arguments. 37 C.F.R. § 41.37(c)(l)(iv)(2012).
Claim 7 depends from claim 1, and further requires that "the flow-
back pan is slidable to select between parallel and series flow in the at least
one middle screening deck and the bottom screening deck."
The Examiner relies on the previous findings with regard to Bailey.
The Examiner further finds Roff teaches a shaker 35 with two parallel
screens 36, 37 that are separated by removable tray 75. Ans. 4. The
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Examiner finds, when tray 75 is removed, shaker 35 becomes a "cascading"
or serial shaker such that material is screened through both screens 3 6, 3 7.
Id. The Examiner concludes it would have been obvious to incorporate a
removable flow directing tray as taught by Roff into Bailey's vibratory
screen apparatus so that initially separated drilling fluid may flow directly
from the top screen to the middle screen, thereby creating serial flow, which
would provide finer screening of the drilling fluid. Id. at 4--5.
Appellants contend that the Examiner fails to provide any reasoning
as to why a person of ordinary skill in the art would be motivated to modify
Bailey to include removable panels. Br. 19. However, this argument fails to
address the Examiner's articulated reasoning as set forth above that the
ordinary artisan would have been motivated to have modified Bailey to
include removable panels as taught by Roff "so that initially separated
drilling fluid may flow directly from the top screen to the middle screen,
thereby creating a seriai flow, which wouid provide finer screening of the
drilling fluid." See Ans. 5. As such, Appellants have not identified
reversible error in the Examiner's obviousness rejection of claim 7. We
will, therefore, sustain this rejection.
Group VI: Claims 8, 16, and 17
Appellants do not separately argue claims 8, 16, and 17, but instead
broadly assert that "the Examiner is merely engaging in improper hindsight
reconstruction, as Bailey provides no guidance to one of ordinary skill in the
art to modify the reference to achieve the claimed apparatus or method." Br.
20.
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However, Appellants do not address the specific findings and
obviousness conclusions articulated by the Examiner in the rejection of these
claims or direct us to any error in those findings and conclusions. Thus,
Appellants have failed to show the Examiner engaged in improper hindsight
reasoning in the rejection of claims 8, 16, and 17. As such, we will sustain
the Examiner's obviousness rejection of these claims for the reasons well
stated on pages 5-6 of the Examiner's Answer.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1-3, 5, 6, 9-11,
13, 15, and 20 under 35 U.S.C. § 102(b) as anticipated by Bailey, and
rejecting claims 4, 7, 8, 12, 14, and 16-19 over Bailey alone or further in
view of Melin or Roff, is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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