Ex Parte Duggan et al

Patent Trial and Appeal Board

Nov 13, 2013

10809042 (P.T.A.B. Nov. 13, 2013)

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.
10/809,042 03/25/2004 Andrew Michael Duggan CRUI/0012 5804
7590 11/14/2013
WILLIAM B. PATTERSON
MOSER, PATTERSON & sHERIDAN, L.L.P.
Suite 1500
3040 Post Oak Blvd.
Houston, TX 77056
EXAMINER
SULLIVAN, DEBRA M
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
11/14/2013 PAPERPAPER
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 ANDREW MICHAEL DUGGAN, GRAEME THOMAS MARR,
PAUL DAVID METCALFE, MARK DAVIES,
NEIL ANDREW SIMPSON, and WAYNE RUDD
____________________

Appeal 2011-009142
Application 10/809,042
Technology Center 3700
____________________

Before GAY ANN SPAHN, MICHELLE R. OSINSKI, and
HYUN J. JUNG, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/809,042

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 6-19, 22, 23, 25, 29-35, 42-44, 49, 52, 53, 63-65, and 98-100.
We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on
October 8, 2013.
We REVERSE.

CLAIMED SUBJECT MATTER
Claims 1 and 100 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the appealed subject matter:
1. A tubing expansion device comprising:
at least one expansion member adapted to expand a
tubing by inducing a hoop stress in the tubing; and
at least one further expansion member adapted to expand
the tubing by inducing a compressive yield of the tubing,
wherein one of said at least one expansion member and said at
least one further expansion member is adapted to expand the
tubing to a first diameter and the other of said at least one
expansion member and said at least one further expansion
member is adapted to further expand the tubing to a larger
second diameter, wherein the device is arranged such that
expansion of the tubing to a desired final diameter is carried out
using the hoop stress inducing expansion member.

1 Appellants identify the real party in interest as Weatherford/Lamb, Inc.
App. Br. 3.
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Application 10/809,042

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REJECTIONS
Appellants seek review of the following rejections:
(1) the rejection of claims 1-3, 6-19, 22, 23, 25, 29-35, 42, 43, 49, 52,
53, 63-65, and 98-100 under 35 U.S.C. § 102(e) as anticipated by Metcalfe
(US 6,543,552 B1, iss. Apr. 8, 2003) (Ans. 3-5);
(2) the rejection of claim 44 under 35 U.S.C. § 103(a) as unpatentable
over Metcalfe and Lauritzen (US 6,722,441 B2, iss. Apr. 20, 2004) (Ans. 5-
6); and
(3) the rejection of claims 1-3, 6-19, 22, 23, 25, 29-35, 42, 43, 49, 52,
53, 63-65, and 98-100 under 35 U.S.C. § 103(a) as unpatentable over
Metcalfe (Ans. 6-7).

ANALYSIS
Rejection (1)
The Examiner found that Metcalfe discloses at least one expansion
member adapted to expand a tubing by inducing a hoop stress in the tubing.
Ans. 3-5. In particular, the Examiner found that the upper, wider end of
conical body 36 of first expander section 30 comprises the expansion
member adapted to expand a tubing by inducing a hoop stress in the tubing.
Id. (citing annotated copy of Figure 1 of Metcalfe on page 5 of the
Examiner’s Answer).
Appellants persuasively contend that the Examiner’s finding is
speculative. App. Br. 11-13. In particular, Appellants argue Metcalfe’s
drawings do not provide a clear indication “that contact between the
[Examiner-identified] ‘hoop stress expansion member’ and the tubular 18
expands the tubular.” Id. at 12. Moreover, Appellants argue that the
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Application 10/809,042

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Examiner-identified feature would not even be capable of expanding the
tubular 18, because “the upper outer edges of the rollers 38 create[] the
‘expansion bend’ of the tubular 18.” Id. We agree with Appellants that
Metcalfe does not disclose sufficient details to support that the upper, wider
end of conical body 36 of first expander section 30, as identified by the
Examiner, is capable of expanding a tubing by inducing a hoop stress in the
tubing. See Hrg. Tr. 6: 22 – 7:3 and 10: 18 – 11:17. Indeed, there appears to
be a gap between the Examiner-identified upper, wider end of conical body
36 and tubular 18 because of rollers 38 extending radially outward, thereby
supporting Appellants’ contention that the Examiner-identified upper, wider
end of conical body 36 of first expander section 30 would not be capable of
expanding a tubing because of rollers 38 that may be extended radially
outwardly. Accordingly, the Examiner’s finding that Metcalfe’s upper,
wider end of conical body 36 of first expander section 30 is capable of
expanding a tubing by inducing a hoop stress in the tubing is speculative,
and as such, inadequately supported.
For the foregoing reasons, we do not sustain the rejection of
independent claims 1 and 100, and claims 2, 3, 6-19, 22, 23, 25, 29-35, 42,
43, 49, 52, 53, 63-65, 98, and 99 which depend therefrom, under 35 U.S.C.
§ 102(e) as anticipated by Metcalfe.

Rejection (2)
The Examiner’s rejection of claim 44 is based on the same erroneous
finding that Metcalfe’s upper, wider end of conical body 36 of first expander
section 30 would be capable of performing the intended use or function of
expanding a tubing by inducing a hoop stress in the tubing, and the
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Application 10/809,042

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Examiner does not explain how Lauritzen would remedy the deficiency of
Metcalfe. Ans. 5-6. Accordingly, we also do not sustain the rejection of
claim 44 under 35 U.S.C. § 103(a) as unpatentable over Metcalfe and
Lauritzen.

Rejection (3)
The Examiner rejected claims 1-3, 6-19, 22, 23, 25, 29-35, 42, 43, 49,
52, 53, 63-65, and 98-100 under 35 U.S.C. § 103(a) as unpatentable over
Metcalfe. Ans. 6-7. In the alternative, the Examiner noted that Metcalfe did
not “explicitly state that the expansion device has an expansion member
adapted to expand the tubing by inducing a hoop stress in the tubing,” but
the Examiner found that:
Metcalfe . . . suggests, as seen in figure 1, a hoop stress
inducing expansion member is located directly above the
compressive yield expansion members (38) since it is clearly
shown that the inclined segment of the tubing (18) located at
the compressive yield expansion members (38) is further
expanded to a straight segment as the tubing is forced over a
portion of the expansion device located directly above the
compressive yield expansion members (38).
Ans. 6. The Examiner concluded that “it would have been obvious to one
having ordinary skill in the art . . . to provide the expansion device with a
hoop stress inducing expansion member to further widen the inclined tubing
to a desired uniform diameter.” Id. However, the Examiner relied on the
same upper, wider end of conical body 36 “located directly above the
compressive yield expansion members (38)” for the claimed hoop stress
inducing expansion member as in the anticipation rejection to provide a
suggestion for modifying Metcalfe. Id. For the same reasons discussed
supra in connection with the anticipation rejection, Appellants have
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persuaded us that the Examiner’s finding that Metcalfe suggests that its
upper, wider end of conical body 36 of first expander section 30 is capable
of expanding a tubing by inducing a hoop stress in the tubing is speculative,
and thus, inadequately supported. Accordingly, we are persuaded by
Appellants’ argument that “it would not have been obvious to a person of
ordinary skill in the art” to modify Metcalfe in the manner suggested by the
Examiner as the Examiner has not articulated a reason with a rational
underpinning to do so. See Reply Br. 4.
For the foregoing reasons, we also do not sustain the rejection of
independent claims 1 and 100, and claims 2, 3, 6-19, 22, 23, 25, 29-35, 42,
43, 49, 52, 53, 63-65, 98, and 99 which depend therefrom, under 35 U.S.C.
§ 103(a) as unpatentable over Metcalfe.
DECISION
The Examiner’s rejection of claims 1-3, 6-19, 22, 23, 25, 29-35, 42,
43, 49, 52, 53, 63-65, and 98-100 under 35 U.S.C. § 102(e) is REVERSED.
The Examiner’s rejection of claim 44 under 35 U.S.C. § 103(a) is
REVERSED.
The Examiner’s rejection of claims 1-3, 6-19, 22, 23, 25, 29-35, 42,
43, 49, 52, 53, 63-65, and 98-100 under 35 U.S.C. 103(a) is REVERSED.

REVERSED

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