Ex Parte Marchand et al

Patent Trial and Appeal Board

Jul 14, 2016

12831457 (P.T.A.B. Jul. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/831,457
92297 7590
Conley Rose P.C
P.O.Box 3267
Houston, TX 77253
FILING DATE FIRST NAMED INVENTOR
07/07/2010 Nicholas Ryan Marchand
07118/2016
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.
1814-58001 2477
EXAMINER
WANG, WEI
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
07/18/2016 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):
pathou@conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS RYAN MARCHAND,
JEREMY SCOTT CLEMENTS, STEVEN EDWARD HACKMAN, and
TYLER JARRET DYCK
Appeal2014-007503
Application 12/831,457 1
Technology Center 3600
Before LYNNE H. BROWNE, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1-8, 17-22, and 25-28. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify National Oilwell Varco, L.P. as the real party in
interest. App. Br. 3.
Appeal2014-007503
Application 12/831,457
CLAIMED SUBJECT MATTER
Claims 1, 17, and 25 are independent, with claims 2-8, 18-22, and
26-28 depending from claim 1, 17, or 25. Claim 1 is illustrative of the
claims on appeal, and is reproduced below:
1. A driveshaft assembly for a downhole motor, comprising:
a housing;
a driveshaft rotatably disposed within the housing, the
driveshaft having a central axis, a first end, and a second end;
a driveshaft adapter having a first end coupled to the first end
of the driveshaft with a universal joint, wherein the first end of
the driveshaft adapter includes a counterbore, and wherein the
first end of the driveshaft and the universal joint are disposed in
the counterbore;
an end cap disposed about the driveshaft and coaxially
coupled to the driveshaft adapter by threaded engagement of an
internal thread disposed on an inner surface of the driveshaft
adapter and an external thread on an outer surface of the end cap;
an annular gap radially positioned between the driveshaft and
the end cap;
a seal boot disposed about the driveshaft and adapted to
restrict fluid flow through the annular gap, wherein the seal boot
has a first end secured to the driveshaft and a second end secured
to the end cap; and
a locking assembly radially positioned between the end cap
and the driveshaft adapter and including a retention member that
engages the end cap and the driveshaft adapter, wherein the
retention member is axially spaced from the engaged internal and
external threads, and wherein the retention member is configured
to restrict the end cap from moving axially relative to the
driveshaft adapter.
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Appeal2014-007503
Application 12/831,457
REJECTIONS
1. Claims 1-8 and 17-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wenzel (US 7, 186, 182 B2, iss. Mar. 6, 2007) and
Chansrivong (US 2009/0149053 Al, pub. June 11, 2009); and
2. Claims 25-28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wenzel, Chansrivong, and Kraus (US 6,949,025 Bl, iss.
Sept. 27, 2005).
OPINION
Claim 1 is directed to a "driveshaft assembly for a downhole motor,"
claim 17 is directed to a "method for assembling a driveshaft assembly for a
downhole motor," and claim 25 is directed to a "downhole motor." The
Examiner cites Wenzel as teaching the majority of limitations recited in each
of these claims. See Final Act. 2--4, 9-10. Figures 3 and 4 from Wenzel are
reproduced below.
56
64 18 12
Figure 3
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Appeal2014-007503
Application 12/831,457
Figure 4
Figures 3 and 4 from Wenzel are fragmentary section views of opposite ends
of a driveline for a downhole motor.
Wenzel describes its driveline as including a shaft 12 and end
housings 14, 16. Wenzel, 2:31--41. Wenzel further explains that "[e]nd
housings 14 and 16 and ends 18 and 20 of shaft 12 are held together by a
threaded retaining nut 52 which presses against a split retaining ring 54." Id.
at 3:7-9. The Examiner cites Wenzel's end housing 14 as corresponding to
the "driveshaft adapter" recited in the claims and Wenzel's threaded
retaining nut 52 as corresponding to the "end cap" recited in the claims.
Final Act. 3.
The Examiner acknowledges that Wenzel does not teach the locking
assembly features recited in the claims. Id. at 3--4, 10. Those features
include, for example, "a locking assembly ... including a retention member
that engages the end cap and the driveshaft adapter ... and ... is configured
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Application 12/831,457
to restrict the end cap from moving axially relative to the driveshaft adapter"
(claim 1 ), "restricting the end cap from moving axially relative to the
driveshaft adapter with ... an end cap retention member" (claim 1 7), and "a
locking assembly adapted to restrict the end cap from moving axially
relative to the driveshaft adapter ... include[ing] ... a retention member"
(claim 25). The claims each further define the retention member's
engagement with and location relative to features of the end cap and drive
shaft adapter.
The Examiner finds that Chansrivong teaches a locking assembly and
proposes modifying Wenzel accordingly. Id. at 4--5, 11. The Examiner
provides an annotated version of Wenzel's Figure 4 to illustrate how the
disclosure of Wenzel would be modified to include the features from
Chansrivong. Id. at 6. The Examiner's annotated version of Figure 4 from
Wenzel is reproduced below.
62/ 5~ 2
j '~
:;~;;.:t, .... :~.::<..::0:: i'-'-0'{:.:::•; ~;';~ .... ,,'::..~·~ ;('.;--,.~>~:'.» ~~·~~· ;.;.::-;:-.~
The annotated version of the figure provided by the Examiner is an enlarged
view of a portion ofWenzel's Figure 4 that indicates where the Examiner
considers threaded engagement between end housing 16 and threaded
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Application 12/831,457
retaining nut 52 to terminate (labeled "[ e ]ngaged threads stop here"), as well
as a portion considered to be unthreaded (labeled accordingly).
The Examiner finds, for example, that Chansrivong's canted coil
spring 180 corresponds to the retaining member recited in the claims (Final
Act. 4, 10) and proposes including that spring in the region labeled
"unthreaded portion" in the annotated version of Wenzel's Figure 4 (id. at 4,
11 ). The Examiner concludes that this modification to Wenzel would have
been "an obvious design choice" and additionally explains that the proposed
modification provides an "extra locking means [that] will prevent the thread
connection between the end cap and the driveshaft adapter from becoming
loose in downhole." Id. at 4--5, 10-11.
Appellants contend that "it would not be obvious to one skilled in the
art to place the retaining spring 18[0] of Chansrivong [in Wenzel's
unthreaded portion] because [] any such unthreaded portion is so miniscule
there would be virtually no room to place the retaining spring 180." App.
Br. 22. Appellants further contend that "the proposed modification relies on
impermissible hindsight." Id. Based on the record before us, we are
persuaded that the Examiner has failed to establish sufficiently that one
skilled in the art would have modified Wenzel' s driveline in the manner
proposed by the Examiner.
Although Wenzel arguably discloses the threaded engagement
between end housing 16 and threaded retaining nut 52 and the unthreaded
portion where that threaded engagement terminates, as shown in the
Examiner's annotated version of Wenzel's Figure 4, the Examiner offers no
persuasive reason as to why Wenzel's driveline would have been modified
to include Chansrivong' s canted coil spring 180 in that region. The
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Appeal2014-007503
Application 12/831,457
Examiner asserts that "the canted coil spring (180 Chansrivong) has to be
installed within this unthreaded portion in order to avoid interfering with the
internal and external threads" (Final Act. 4, 11 ), but this reasoning
incorrectly starts with the premise that Chansrivong' s canted coil spring 180
would be included in Wenzel.
The Examiner additionally notes that "Chansrivong further explicitly
suggests that threaded screws may be used in combination with a canted coil
spring (i-f 0004 lines 18-20)," but it is unclear how this supports the
Examiner's rejection. Final Act. 4, 10. The cited portion of Chansrivong
simply states that "mechanical fasteners, such as threaded screws or lock
nuts, may be used in combination with spring-based connectors."
Chansrivong i14. The fact that a threaded screw may be used in
combination with Chansrivong' s canted coil spring 180 does not imply that
Chansrivong's canted coil spring 180 would be used in Wenzel's driveline
simply because of a threaded engagement between portions of that driveline.
As for the Examiner's assertion that the proposed modification
provides an "extra locking means [that] will prevent the thread connection
between the end cap and the driveshaft adapter from becoming loose in
downhole" (Final Act. 5, 11 ), there is no corresponding explanation as to
why this would be achieved. Nor does our review of the disclosure of
Wenzel reveal why (or how) this would be achieved. For example, we do
not see grooves or recesses, like those depicted in Chansrivong (see
Chansrivong, Fig. 6A), formed on the surfaces between Wenzel' s end
housing 16 and threaded retaining nut 52 that would receive Chansrivong's
canted coil spring 180. Nor do we see any surfaces on Wenzel's end
housing 16 or threaded retaining nut 52 on which Chansrivong's canted coil
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Application 12/831,457
spring 180 could exert an axial locking force. Perhaps more importantly, the
Examiner does not allege that such features exist in Wenzel or propose
corresponding modifications to Wenzel.
We are also not persuaded by the Examiner's characterization of the
modification as mere design choice. It appears that the Examiner relies on
design choice simply for the location of Chansrivong' s canted coil spring
180 in Wenzel's driveline. See Final Act. 4--5, 11 ("installing the canted coil
spring within the unthreaded portion is an obvious design choice"); see also
Ans. 5---6. The problem with this rationale is that one skilled in the art first
must have reason to include Chansrivong's canted coil spring 180 in
Wenzel's driveline, which, as noted above, the Examiner fails to establish
sufficiently. To the extent the Examiner's rejections can be read as
proposing to add Chansrivong' s canted coil spring 180 in Wenzel' s driveline
based on design choice, we are not persuaded that an allegation of design
choice is sufficient to support that modification.
Furthermore, even if one skilled in the art would have combined
Chansrivong's canted coil spring 180 with Wenzel's driveline, we are not
persuaded that it would have been obvious to do so in the manner proposed
by the Examiner. In the Final Action, the Examiner does not propose
modifying Chansrivong's canted coil spring 180 or the structure ofWenzel's
driveline to accommodate that spring. See Final Act. 4--5, 11 (Examiner
proposes "installing [ Chansrivong' s] canted coil spring within [Wenzel' s]
unthreaded portion"). As Appellants note, it is unclear whether such a
region is appropriate to receive Chansrivong's canted coil spring 180. App.
Br. 22. For example, Wenzel appears to illustrate the height of the
unthreaded portion as corresponding to the height of the threading. See
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Appeal2014-007503
Application 12/831,457
Wenzel, Figs. 3, 4. The Examiner attempts to address these deficiencies in
the Examiner's Answer, noting, for example, that "[e]ven though the
unthreaded portion is small, it would have been obvious to one with ordinary
skill in the art at the time of the invention to modify the length of the
unthreaded portion based on the size of the spring (180) of Chansrivong in
order to place the spring (180) of Chansrivong within the unthreaded portion
of Wenzel." Ans. 5. Even if we considered this further proposed
modification, this is simply a conclusion, completely devoid of any rational
underpinning. We agree with Appellants (see Reply Br. 5) that this
conclusory reasoning is insufficient to cure the deficiencies noted above.
For at least these reasons, the Examiner has failed to establish
sufficiently that claims 1-8, 17-22, and 25-28 are unpatentable under 35
U.S.C. § 103(a).
DECISION
We REVERSE the Examiner's decision to reject claims 1-8, 17-22,
and 25-28 as unpatentable under 35 U.S.C. § 103(a).
REVERSED
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