Ex Parte Nguyen et al

Patent Trial and Appeal Board

Oct 19, 2018

13975329 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/975,329 08/24/2013 Dennis P. Nguyen
64833 7590 10/22/2018
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
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.
CMRN:0067-2/SWA
SUR-03115
CONFIRMATION NO.
1077
EXAMINER
FULLER, ROBERT EDWARD
ART UNIT PAPER NUMBER
3676
MAIL DATE DELIVERY MODE
10/22/2018 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
Ex parte DENNIS P. NGUYEN, JAY PA TRICK PAINTER, and
KIRK PAUL GUIDRY
Appeal 2018-001801
Application 13/975,329 1
Technology Center 3600
Before LINDA E. HORNER, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.
Opinion for the Board by HORNER, Administrative Patent Judge.
Opinion dissenting-in-part and concurring-in-part by DOUGAL,
Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1-7 and 10-18. Final Office Action
1 Cameron International Corporation ("Appellant") is the applicant as
provided for under 3 7 C.F .R. § 1.46 and is identified in the Appeal Brief as
the real party in interest. Appeal Brief (August 1, 2017) ("Appeal Br."),
at 2.
Appeal 2018-001801
Application 13/975,329
(February 2, 2017) ("Final Act."). We have jurisdiction under 35 U.S.C.
§ 6(b ).
The claimed subject matter relates to "devices configured to isolate
portions of wellheads from fluid pressure." Specification (August 24, 2013)
(hereinafter "Spec.") ,r 2. Appellant contests the Examiner's rejections of
the claims for lack of adequate written description and as obvious over the
prior art. For the reasons explained below, we find that the original
disclosure does not provide adequate written description for the claimed
subject matter. We also agree with the Examiner's reasoning supporting a
determination of obviousness. Thus, we AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 6, and 15 are independent claims. Claim 1 is illustrative of
the subject matter on appeal and is reproduced below with the disputed
claim language shown in italics for emphasis.
1. A system, comprising:
a wellhead assembly comprising:
a tubing head comprising a first inner cylindrical
surface and a top surface;
a tubular member comprising a second inner
cylindrical surface and a bottom surface, wherein the
tubing head and the tubular member are disposed against
one another at an interface between the top surface and
the bottom surface, and the interface comprises a first
annular recess and a second annular recess, wherein the
first annular recess is radially outward from the second
annular recess relative to a central axis of the tubing head
and the tubular member, the first annular recess has a
first recess depth in an axial direction along the central
axis, the second annular recess has a second recess
depth in the axial direction along the central axis, and
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the first recess depth is greater than the second recess
depth; and
a bypass sleeve disposed entirely within the tubing
head and below the top surface of tubing head, wherein
the bypass sleeve is configured to create an isolation
region about at least one valve coupled to a side wall of
the tubing head.
Appeal Br. 16 (Claims Appendix).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-7 and 10-18 stand rejected under pre-AIA 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written
description requirement.
2. Claims 1-3, 5-7, 10-13, and 15-18 stand rejected under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Lam et al.
(US 2008/0230226 Al, published September 25, 2008) ("Lam")
and Magnier et al. (US 2007/0102926 Al, published May 10,
2007) ("Magnier").
3. Claims 4 and 14 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as unpatentable over Lam, Magnier, and Hickie
(US 2008/0083539 Al, published April 10, 2008).
ANALYSIS
Written Description Rejection
The Examiner found that the limitation "the first recess depth is
greater than the second recess depth," recited in independent claims 1, 6, and
15, lacks adequate support in the original disclosure because the
Specification does not mention the relative sizes of the recesses. Final
Act. 4. The Examiner states that Appellant cannot rely on the Figures as
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providing support for this limitation because the Specification gives no
indication that the drawings are to scale. Id. ( citing Manual of Patent
Examining Procedure ("MPEP") § 2125 (II)).
Appellant points to Figure 31 of the original disclosure as providing
support for this limitation. Appeal Br. 6. Appellant further argues that
MPEP § 2125 is not applicable to how drawings are interpreted for purposes
of the written description requirement. Id.; see also Reply Br. 5 ( citing
MPEP § 2163 for proposition that an applicant may show possession of an
invention by disclosure of drawings that are sufficiently detailed). Appellant
asserts that one having ordinary skill in the art would "appreciate the
significance of the existence and size of the recessed portion 331" in light of
Figure 31 and the description in the Specification that "the recessed portion
331 mitigates the occurrence of bending stresses in the adapter 248 and
assembly." Appeal Br. 6-7.
The Examiner responds that MPEP § 2125 was cited for the general
principle that drawings are not to scale unless otherwise indicated, which
general principle is applicable in a written description analysis. Ans. 2. The
Examiner explains that because the Specification does not tie the ability of
the recess to mitigate the occurrence of bending stresses to the relative size
of the first recess and second recess, the description in the Specification does
not provide adequate support for the limitation. Id. at 3.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
subject matter as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1562---63 (Fed. Cir. 1991).
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As to reliance on patent drawings, the court has stated that although
patent drawings are not working drawings, that does not mean, "that things
patent drawings show clearly are to be disregarded." In re Mraz, 455 F.2d
1069, 1072 ( CCP A 1972) (holding it was proper to rely solely on a prior art
drawing showing the device with great particularity and showing grooves to
have an angularity well within the claimed range for a finding of
anticipation). The court later clarified that a drawing teaches all that it
reasonably discloses and suggests to a person of ordinary skill in the art. In
re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (holding that a design patent
can be properly cited as the basis for an anticipation rejection of claims in a
utility patent application). The court drew the line, however, when a
patentee sought to rely solely on the patent drawings to support an
interpretation of a claim term that turned on the relative dimensions of the
elements. See Hockerson-Halberstadt, Inc. v. Avia Grp. Int 'l, Inc., 222 F.3d
951, 956 (Fed. Cir. 2000). The court declined to draw an interference from
the patent's figures about the quantitative relationship between the
respective widths of the groove and fins, holding, "patent drawings do not
define the precise proportions of the elements and may not be relied on to
show particular sizes if the specification is completely silent on the issue."
Id. (citing In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) ("Absent any
written description in the specification of quantitative values, arguments
based on measurement of a drawing are of little value.") (additional citations
omitted)).
We agree with the Examiner that the original disclosure fails to
support the claim recitation of "the first recess depth is greater than the
second recess depth." The originally filed drawings would not have
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conveyed that the first recess has a greater depth than the second recess to a
person of ordinary skill in the art. The difference in depths of these recesses,
if any, as depicted in Figure 31 is so slight as to be barely perceptible. Like
the court in Hockerson-Halberstadt, we decline to draw an interference from
Figure 31 about the quantitative relationship between the respective depths
of the first and second recesses when the Specification does not indicate that
the figure is drawn to scale, and when the Specification is completely silent
on the issue of the respective depths.
Appellant's argument that the stated purpose of the first depth to
mitigate bending stresses would have led one having ordinary skill in the art
to conclude that Appellant had possession of the invention (i.e., the first
recess depth is greater than the second recess depth) is unsupported attorney
argument and is not convincing. See In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984) (holding that lawyer arguments and conclusory statements
which are unsupported by factual evidence are entitled to little probative
value); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's
arguments in a brief cannot take the place of evidence."). As noted by the
Examiner, the Specification does not clearly tie the purpose of the first
recess to the claimed relative depths of the first and second recesses. Ans. 3.
We also are not persuaded by Appellant's argument that the Examiner
erred in applying MPEP § 2125. Despite this section of the MPEP providing
guidance about "Drawings as Prior Art," one of the cases cited in this
section, i.e., Hockerson-Halberstadt, did not deal with a prior art drawing.
As discussed above, in Hockerson-Halberstadt, the court refused to permit a
patentee to rely on its own drawings as showing a particular proportion or
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relationship between two features, in arguing for a particular claim
construction. Hockerson-Halberstadt, 222 F.3d at 956.
For these reasons, we do not find error in the Examiner's finding that
the claimed subject matter lacks adequate written description in the original
disclosure. Thus, we sustain the rejection of claims 1-7 and 10-18 under
35 U.S.C. § 112, first paragraph.
Obviousness Rejections
Claims 1, 3, 5-7, 10, 11, 13, and 15-17
Appellant argues independent claims 1, 6, and 15 as a group. Appeal
Br. 9-12. Appellant does not present separate arguments for the
patentability of dependent claims 3, 5, 7, 10, 11, 13, 16, and 17. Id. at 12.
We select claim 1 as representative of this group, and claims 3, 5-7, 10, 11,
13, and 15-17 stand or fall withclaim 1. 2 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner rejected claim 1 as unpatentable over Lam and
Magnier. Final Act. 5. The Examiner found, however, that the system of
Lam as modified by Magnier fails to disclose the first annular recess having
a greater axial depth than the second annular recess. Id. at 6. The Examiner
determined that the claimed relative depths of the annular recesses would
have been an obvious matter of design choice. Id. The Examiner explained
that "applicant has not disclosed that having a first recess with a greater
depth solves any stated problem or is for any particular purpose and it
appears that the invention would [perform] equally well with the second
recess having a greater depth than the first recess." Id.
2 Appellant presents additional arguments for patentability of dependent
claims 2, 12, and 18, which we address separately.
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Appellant argues that the Examiner's reasoning is not sufficient to
establish a prima facie case of obviousness. Appeal Br. 12. Appellant
contends that the Examiner's finding that the invention would perform
equally well with the second recess having a greater depth than the first
recess is "conclusory and speculative." Id.
In response, the Examiner explains that the claimed relative depths of
the annular recesses is one of a finite number of possibilities. Ans. 4. The
Examiner states, "The first recess can either have a greater depth ( as
claimed), an equal depth, or a lesser depth than the second recess." Id. The
Examiner reasons that it would have been obvious to try the claimed
configuration as a choice from among the finite predictable solutions
"[g]iven the fact that appellant 'has not disclosed that having a first recess
with a greater depth solves any stated problem or is for any particular
purpose."' Id. (quoting Final Act. 6). The Examiner explains, "One of
ordinary skill in the art would have based their selection on the pressure
conditions of the well, the size of the well, and the relative sizes of the
wellhead components being connected together." Id.
Appellant responds, "[T]he Examiner has merely noted factors that
could, conceivably, affect the relative recess depths, as recited by the claims,
but has not provided any articulated reasoning with some rational
underpinnings to support a conclusion that the first recess should have a
depth greater than the second recess." Reply Br. 11.
The Court in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,419 (2007)
cautioned, "Granting patent protection to advances that would occur in the
ordinary course without real innovation retards progress and may, in the case
of patents combining previously known elements, deprive prior inventions
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of their value or utility." It is within this context that the Court held that it
was error for the Court of Appeals to conclude that a patent claim cannot be
proved obvious merely by showing that the combination of elements was
"obvious to try." Id. at 421. The Court stated,
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
Id. As explained above, the Examiner determined that there was a design
need to modify Lam to provide a first annular recess of Magnier outside of
Lam's second annular recess to solve the problem of "off-loading on the
gasket relative to a traditional face-to-face connection." Final Act. 6.
Appellant does not contest this determination.
The Examiner further determined that to make this modification, one
of ordinary skill in the art would be faced with a finite number of three
predictable solutions, i.e., (1) make the first recess of a greater depth than the
second recess, (2) make the first recess of equal depth to the second recess,
or (3) make the first recess of a lesser depth than the second recess. Ans. 4.
We find no error in this finding by the Examiner.
The Examiner further determined that a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp
based on the pressure conditions of the well, the size of the well, and the
relative sizes of the wellhead components being connected together. Id.
Appellant did not allege error in the Examiner's identification of factors that
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one would consider in designing the depths of the claimed recesses. Reply
Br. 11 (noting that the Examiner "noted factors that could, conceivably,
affect the relative recess depths").
Based on the Examiner's findings stated above, we agree that use of a
first recess having a depth greater than the depth of the second recess is not
the product of innovation but of ordinary skill in the art. A person of
ordinary skill in the art, seeking to modify Lam to add a first annular recess
of Magnier to solve the problem of off-loading, would have been faced with
the choice of what depth to make the added first annular recess relative to
the depth of Lam's existing second annular recess. As noted by the
Examiner, a person of ordinary skill in the art would take into account
factors that might affect the relative recess depths in choosing from among
the above-noted three predictable solutions. In doing so, the person of
ordinary skill would have arrived at the claimed relative recess depths as a
matter of routine skill in the art.
For these reasons, we do not find error in the Examiner's rejection of
claim 1 under 35 U.S.C. § 103(a). Accordingly, we sustain the rejection of
claims 1, 3, 5-7, 10, 11, 13, and 15-17 as unpatentable over Lam and
Magnier.
Dependent claims 2, 12, and 18
Appellant presents additional arguments for the patentability of claims
2, 12, and 18 as a subgroup. Appeal Br. 12-13. We select claim 2 as
representative of this subgroup, and claims 12 and 18 stand or fall with
claim 2. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 2 depends from claim 1 and recites, "wherein the first annular
recess is disposed in the top surface of the tubing head." Appeal Br. 16
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(Claims Appendix). The Examiner found that Lam, as modified with
Magnier, would result in the first annular recess disposed in the bottom
surface of the tubular member. Final Act. 6. The Examiner determined that
it would have been an obvious rearrangement of parts involving only routine
skill in the art to modify Lam "to place the annular recess on the top surface
of the tubing head." Id. at 6-7 (citing In re Japikse, 181 F.2d 1019 (CCPA
1950)).
Appellant contends that the mere fact that one could rearrange the
parts of the reference device to meet the claim is not, by itself, sufficient to
support a finding of obviousness. Appeal Br. 13 (citing MPEP § 2144.04).
Appellant argues that the Examiner fails to comply with MPEP § 2144.04
because the Examiner has not provided evidence in the prior art for a
motivation or reason for one of ordinary skill in the art to modify Lam and
Magnier in the manner claimed. Id. ( citing Ex parte Chicago Rawhide Mfg.
Co., 223 USPQ 351,353 (BPAI 1984)).
The Examiner, in response, points to disclosure in Magnier that "the
terms 'bottom' and 'top' are used for convenience with reference to the
position of the flanges in the drawing, and that the flanged connection could
naturally take up any position relative to the vertical." Ans. 5 (quoting
Magnier ,r 50). The Examiner finds that this disclosure includes a
180-degree rotation with respect to the vertical, i.e., in which the bottom and
the top are reversed, such that the recess would be in the top surface of the
bottom flange rather than the bottom surface of the top flange. Id. The
Examiner further finds that such a reversal would not affect Magnier's
operation. Id.
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We agree with the Examiner's determination. In Chicago Rawhide,
the Board reversed an Examiner's obviousness rejection because the
proposed rearrangement of parts required the parts "to coact differently from
the way they coact in the arrangement disclosed by the reference." 223
USPQ at 353 (emphasis added). Here, the Examiner has shown that one
having ordinary skill in the art would appreciate the recess could be placed
on either surface of the opposing flange surfaces without affecting the
functioning of the parts in the arrangement. Under the "functional
approach" discussed in KSR, the Examiner adequately supported the
determination of obviousness of the subject matter of claim 2 with rational
underpinnings. KSR, 550 U.S. at 416. Accordingly, we sustain the rejection
of claims 2, 12, and 18 under 35 U.S.C. § 103(a) as unpatentable over Lam
and Magnier.
Dependent claims 4 and 14
Appellant relies on the same arguments for patentability of claims 4
and 14 as discussed above in our analysis of claim 1 over the first ground of
rejection. Appeal Br. 14 (arguing that claims 4 and 14 are patentable based
on their respective dependencies from allowable independent claims 1 and 6
and because Hickie fails to cure the deficiencies in Lam and Magnier). We
sustain the rejection of claims 4 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Lam, Magnier, and Hickie for the same reasons provided
above in our analysis of claim 1.
DECISION
The decision of the Examiner rejecting claims 1-7 and 10-18 is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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DOUGAL, Administrative Patent Judge, dissenting-in-part and concurring-
in-part.
For the reasons discussed below, I must respectfully dissent from my
colleagues judgement sustaining the Examiner's rejections of claims 1-7 and
10-18 as failing to comply with the written description requirement under
pre-AIA 35 U.S.C. § 112, first paragraph.
At the same time, I concur and join in the majority's judgement
sustaining the Examiner's rejections of claim 1-18 as obvious under pre-
AIA 35 U.S.C. § 103(a).
Written Description Rejection
As stated above:
To satisfy the written description requirement, the specification
must describe the claimed invention in sufficient detail that one
skilled in the art can reasonably conclude that the inventor had
possession of the claimed subject matter as of the filing date.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.
1991).
Additionally, as correctly stated by Appellants: "the initial burden of proof
regarding the sufficiency of the written description falls on the Examiner."
Reply 2 (citing In re Wertheim, 541 F.2d 257,262 (C.C.P.A. 1976)).
The Examiner admits that "Fig. 31 of the instant application appears
to show the first recess having a greater depth than the second recess." Ans.
3. However, the Examiner cites the Manual of Patent Examining Procedure
("MPEP") for the proposition that "drawings are not to scale unless
otherwise indicated." Final Act. 4 (citing MPEP § 2125, II). The Examiner
further states that the specification does not state that the drawings are to
scale (id.), that "[p ]erhaps the first recess is drawn larger simply to make it
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easier for the reader of the application to see this particular element" (Ans.
3) and that he does not know "why the recess is shown this way" (id.).
The fact that the written description does not explain why the recess is
depicted in a certain way is relevant, but does not mean that one skilled in
the art cannot reasonably conclude that the inventor had possession of the
claimed subject matter.
In the Mraz case cited by the majority above, the court draws a
distinction between "patent drawings" and "working drawings" while also
holding that the distinction does not mean, "that things patent drawings
show clearly are to be disregarded." In re Mraz, 455 F.2d 1069, 1072
(CCPA 1972) (holding it was proper to rely solely on a prior art drawing
showing the device with great particularity and showing grooves to have an
angularity well within the claimed range for a finding of anticipation).
Today, in many technological arts, patent drawings and working drawings
are based on the same CAD files. As a result, patent drawings often contain
high levels of detail as a matter of course and one of skill in the art would
understand that the inventor had possession of all features depicted in the
drawings because one of skill in the art could reasonably conclude that the
drawings were based on CAD drawings, drawn to scale, of a version of the
invented object or product. The Examiner has provided no reasoning or
evidence to suggest that the computer generated drawings in the present case
are schematic nor has he explained why one of skill in the art would
determine that the inventor did not have possession of the invention at the
time of filing. Further, the Examiner has not sufficiently explained why the
relative size is not something that the drawing reasonably discloses and
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suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d
911,914 (CCPA 1979).
Hockerson-Halberstadt, Inc. v. Avia Grp. Int'!, Inc., 222 F.3d 951,
956 (Fed. Cir. 2000) relied on by the majority does not overcome the
Examiner's burden in the first instance to explain why the written
description is insufficient. Further, in Hockerson-Halberstadt, the court, in
the process of claim construction, was reviewing the disclosure of drawings
made by hand which gave no indication that they were to scale, rather than
detailed computer generated drawings as in the present case.
For these reasons, I would find error in the Examiner's rejection of
claims 1-7 and 10-18 as failing to comply with the written description
requirement.
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