Ex Parte Hopper

Patent Trial and Appeal Board

Oct 10, 2018

13976383 (P.T.A.B. Oct. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/976,383 08/29/2013 Hans P Hopper
141837 7590 10/10/2018
Eubanks PLLC (OneSubsea)
12777 Jones Road
Suite 465
Houston, TX 77070
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.
SUB-031432 US
(18001-015)
6863
EXAMINER
MELLON, DAVID C
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
10/10/2018 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
Exparte HANS P. HOPPER
Appeal 2017-011318
Application 13/97 6,383 1
Technology Center 1700
Before JAMES C. HOUSEL, BRIAND. RANGE, and LILAN REN,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--4, 6-12, 16-27, and 29. We have jurisdiction.
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is OneSubsea IP UK
Limited. Appeal Br. 3.
Appeal 2017-011318
Application 13/976,383
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a method and
apparatus for use in fluid separation including for use separating fluid
streams produced from subterranean oil and gas wells. Spec. 1 :4--9. In
particular, the application describes making use of a flow guide to induce a
spiral Coanda effect that directs fluid into a conduit opening. See, e.g., id. at
3:31--4:5; 8:23-27. An embodiment of Appellant's apparatus is depicted by
Figure 2 of the Specification. We reproduce Figure 2 below.
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2 In this Decision, we refer to the Final Office Action dated September 16,
2016 ("Final Act."), the Appeal Brief filed April 5, 2017 ("Appeal Br."), the
Examiner's Answer dated July 6, 2017 ("Ans."), and the Reply Brief filed
September 6, 2017 ("Reply Br.").
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Application 13/976,383
Figure 2 shows a separator assembly comprising generally cylindrical vessel
104 according to one embodiment of the Specification. Id. at 14: 19-22. Dip
pipe 116 extends into the central region of the vessel 104. Id. at 15:13-15.
Flow guide 122 includes a convex outer surface configured to induce a spiral
Coanda effect that causes relatively lower density fluid stream upstream and
into the opening 120 of conduct 116. Appeal Br. 7; Spec. 17: 1-14.
Claim 1, reproduced below with emphases added to certain key
recitations, is illustrative of the claimed subject matter:
1. An apparatus for controlling a flow of a multiphase fluid
stream, the apparatus comprising:
a separation region comprising an axis and configured
such that the multiphase fluid stream flows in a downstream
helical path within the separation region to separate into a
relatively higher density fluid stream and a relatively lower
density fluid stream;
a conduit positioned in the separation region and
comprising an opening to provide an outlet for fluid from the
separation region; and
a flow guide positioned downstream of the opening of the
conduit within the separation region and comprising a convex
outer surface configured to induce a spiral Coanda effect in
the flow of the relatively lower density fluid stream to direct
the relatively lower density fluid stream upstream over the
flow guide and into the opening.
Appeal Br. 18 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Keuschnigg
Hopper
us 5,236,587
US 2010/0064893 Al
3
Aug. 17, 1993
Mar. 18, 2010
Appeal 2017-011318
Application 13/976,383
Weber GE 1292479 April 10, 1969
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1--4, 11, 12, 16-20, 26, and 27 under 35 U.S.C.
§ 102(b) as being anticipated by Keuschnigg. Ans. 2; Final Act. 3.
Rejection 2. Claim 1 under 35 U.S.C. § 102(b) as being anticipated
by Weber. Ans. 2; Final Act. 4.
Rejection 3. Claims 1--4, 6-12, 16-27, and 29 under 35 U.S.C. § 103
as obvious over Hopper in view ofKeuschnigg. Ans. 2; Final Act. 5. 3
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellant's arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues each rejection separately but argues all claims as a
group. See generally Appeal Br. Therefore, consistent with the provisions
3 Appellant cancelled claim 5. Appeal Br. 19.
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Appeal 2017-011318
Application 13/976,383
of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 1, and
all other claims on appeal stand or fall together with claim 1.
Rejection 1. The Examiner rejects claim 1 under 35 U.S.C. § 102 as
being anticipated by Keuschnigg, and the Examiner refers to Keuschnigg's
Figure 1 (reproduced below). Ans. 2; Final Act. 3.
Fig.1 4
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Keuschnigg's Figure 1 is a sectional view of a separating device exposed to
a tangential oncoming flow. Keuschnigg 4:13-14. A liquid or gas to be
separated flows through the spiral shaped space 5 of Keuschnigg. Id. at
4:61-66. The Examiner finds that baffle means 12 is a flow guide with
convex geometry capable of producing the recited Coanda effect and other
recited functionality. Final Act. 3. The Examiner states "[i]t is considered
inherent that the same structure ( e.g., the convex outer surface) would
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Appeal 2017-011318
Application 13/976,383
necessarily provide the same functionality absent some evidence to the
contrary." Ans. 5.
Appellant argues that Keuschnigg does not teach a flow guide
including a convex outer surface "configured to induce a spiral Coanda
effect in the flow of a relatively lower density fluid stream to direct a
relatively lower density fluid stream upstream over the flow guide and into
an opening, as claim 1 recites." Appeal Br. 10. Appellant does not dispute
that Keuschnigg baffle means 12 is a flow guide. The remaining portion of
the recitation that Appellant argues refers to functional recitations of
claim 1.
While a patent applicant may recite features structurally or
functionally, "choosing to define an element functionally, i.e., by what it
does, carries with it a risk." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). In particular, where there is reason to believe that prior art structure
is inherently capable of performing the claimed function, the burden shifts to
the applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. See id.; In re Hallman, 655
F.2d 212, 215 (CCPA 1981) (affirming rejections where applicant failed to
show that prior art structures were not inherently capable of functioning as
claimed invention).
Here, the Examiner's findings are sufficient to provide a reason to
believe the Keuschnigg structure is inherently capable of performing the
functional language of claim 1. In particular, the uppermost portion of
Keuschnigg baffle means 12 is convex in shape, and Appellant's
Specification indicates that flow over such a shape will result in a Coanda
effect. Ans. 3; Spec. 3:30-4:5. Baffle means 12 is orientated below
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Appeal 2017-011318
Application 13/976,383
( downstream relative to spiral flow of fluid first entering the device) dip pipe
9 and is configured similarly to Appellant's flow guide 212 relative to dip
pipe 116. Compare Keuschnigg's Figure 1 with Spec. Fig. 2. Thus, there is
reason to believe that Coanda effect caused by baffle means 12 will result in
flow into dip pipe 9.
Appellant attempts to show the claimed function patentably
distinguishes the claimed structure from the prior art structure by arguing
that Keuschnigg's baffle means 12 prevents upward flow (upstream in the
parlance of claim 1) rather than causing such flow. Appeal Br. 10 ( quoting
Keuschnigg 5:23-30). Appellant also argues that baffles means 12 has a
concave surface rather than a convex surface. Reply Br. 6. As apparent
from Keuschnigg' s Figure 1, however, the passage quoted by Appellant
(Appeal Br. 10) refers to the lower flange portion of baffle means 12. The
Examiner's finding that the portion of baffle means 12 nearest to dip pipe 9
is concave is supported by a preponderance of the evidence. Ans. 4
("element (12) has a curved convex portion near the openings of the dip
pipes (8/9) in addition to the flared end portions"); Keuschnigg Fig. 1.
Appellant also argues that In re Giannelli, 739 F.3d 1375, 1379-80
(Fed. Cir. 2014) holds that anticipation cannot be met merely by apparatus
that "could be used as recited in the claims." Appeal Br. 12. We do not
agree with Appellant's interpretation of In re Giannelli because the
interpretation is inconsistent with, for example, the holding of In re
Schreiber.
Our reviewing court in In re Giannelli held that the Board erred in
finding that prior art had handles "adapted to be moved ... by pulling a
force ... in a rowing motion." In re Giannelli, 739 F.3d 1376, 1379. Our
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Appeal 2017-011318
Application 13/976,383
reviewing court emphasized that "[p ]hysical capability alone does not render
obvious that which is contraindicated" and that, on the record before the
court, it was "not obvious to modify ... the prior art chest press machine to
arrive at the apparatus of the [rejected application]." Id. at 1380.
The present circumstance is distinguishable from In re Giannelli
because no modification of Keuschnigg is necessary to reach the recitations
of Appellant's claim 1. The Examiner cited evidence providing a reasonable
basis to believe the Keuschnigg device-without modification-is capable
of performing the functional recitations of claim 1, and Appellant did not
persuasively show that the claimed function patentably distinguishes the
claimed structure from the prior art structure. Because Appellant's
arguments do not identify reversible error, we sustain the Examiner's first
rejection.
Rejection 2. The Examiner rejects claim 1 under 35 U.S.C. § 102 as
being anticipated by Weber. Ans. 2; Final Act. 4. The Examiner refers to,
for example, Weber's Figures 1 and 2. Final Act. 4. Those two figures are
reproduced below.
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Appeal 2017-011318
Application 13/976,383
+
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Weber's Figures 1 and 2 depict, in section, embodiments of the Weber
invention. Weber ,r 6. The Examiner finds that Weber teaches each
recitation of claim 1. Final Act. 4. The Examiner finds, for example, that
Weber's "installation body 6" (Weber ,r 9) is a flowguide positioned
downstream of the conduit (conduit 2). Final Act. 4.
Appellant raises arguments akin to the arguments against the
Examiner's first rejection. Appeal Br. 12-15. In particular, Appellant
argues that Weber lacks a separation region and a flow guide that perform
claim 1 's functional recitations. Id. Weber's Figure 1 and Figure 2,
however, support by a preponderance of the evidence the Examiner's finding
that Weber's separation region (the area inside body (3)) and flow guide
(installation body 6) is capable of performing claim 1 's recited functions.
Ans. 5. Weber's installation body 6 is concave shaped (Weber Figs. 1 and
2) and therefore, according to Appellant's Specification (Spec. 3 :31--4:5),
would produce a Coanda effect. The Weber device (Weber Figs. 1 and 2) is
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Appeal 2017-011318
Application 13/976,383
arranged similarly to Appellant's apparatus (Spec. Fig. 2) in that the
installation body 6 (i.e., the flow guide) is positioned downstream from dip
tube 2. Thus, there is a reasonable basis to believe the Coanda effect caused
by body 6 will result in flow into the dip tube 2. Indeed, such a flow is
indicated by the arrows of Weber's Figures 1 and 2.
The Examiner reliance on Weber's figures reasonable indicates the
Weber device is capable of performing the functional recitations of claim 1.
Because Appellant does not persuasively show that the claimed function
patentably distinguishes the claimed structure from the prior art structure,
Appellant's arguments do not identify reversible error, and we sustain this
rejection.
Rejection 3. The Examiner rejects claims 1--4, 6-12, 16-2 7, and 2 9
under 35 U.S.C. § 103 as obvious over Hopper in view of Keuschnigg. Ans.
2; Final Act. 5. The Examiner finds that Hopper discloses most recitations
of claim 1 but "fails to provide for the utilization of convex surfaced flow
guides capable of creating a coanda spiral effect." Final Act. 5 ( citing
Hopper). The Examiner finds that Keuschnigg teaches such a flow guide (as
explained above) and determines it would have been obvious to replace the
guide members of Hopper with the guide members of Keuschnigg "for the
purpose of providing for a reduced loss cyclonic member which also
maintains higher rotational speeds and enhances flow dynamics." Id. at 5---6.
Appellant argues that neither Hopper nor Keuschnigg teach a flow
guide meeting the claim 1 's functional recitations. Appeal Br. 15-16. As
explained above, however, Keuschnigg' s flow guide would be capable of
creating a Coanda effect and, when implemented in Hopper, would cause
flow into Hopper's dip pipe. The Examiner provides reasonable basis for
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Appeal 2017-011318
Application 13/976,383
believing Hopper modified by Keuschnigg would meet the functional
recitations of claim 1 (see, e.g., Ans. 7-8), and Appellant does not
persuasively dispute the Examiner's position.
Appellant also argues that Keuschnigg teaches away from the present
claims because baffle means 12 promotes downward and downstream fluid
flow. Appeal Br. 16. While Appellant is correct that the lower flanged
portion of baffle means 12 prevents upward flow, the upper part of baffle
means 12 is convex and would promote a Coanda effect as explained above.
We therefore do not agree that Keuschnigg teaches away from the
Examiner's proposed combination.
Because Appellant's arguments do not identify reversible error, we
sustain this rejection.
DECISION
For the above reasons, we affirm the Examiner's rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
11