Ex Parte Watson et al

Patent Trial and Appeal Board

Aug 25, 2013

12141468 (P.T.A.B. Aug. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ARTHUR I. WATSON, GREGORY H. MANKE,
WAYNE L. COSTA, KEVIN T. SCARSDALE, and
CHRIS E. FEATHERBY
____________________

Appeal 2011-001661
Application 12/141,468
Technology Center 2800
____________________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001661
Application 12/141,468

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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Disclosed Invention
Appellants disclose a system and method for connecting a power
cable to a submersible electric motor in a well. (Spec. ¶¶ [0001] and
[0002]; Abs.; Figs. 1 and 2).
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 16, which are reproduced below with emphasis
added:
1. A system for use in a well, comprising:

a power cable having a plurality of conductors for
carrying a three-phase electric signal;

a submersible component powered by the three-phase
electric signal; and

a connector system connecting the power cable to the
submersible component, the connector system having a
plurality of individual connectors with each individual
connector being separately connectable to the submersible
component for carrying an individual phase of the three-phase
electric signal, each individual connector being independently
fastened to the submersible component to form a sealed
connection with the submersible component independent of the
other individual connectors.

Appeal 2011-001661
Application 12/141,468

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16. A device, comprising:
a submersible, high temperature pothead to provide an
electric connection between a multi-phase power cable and a
submersible component, the submersible high-temperature
pothead having a plurality of connectors that are separately
connectable to the submersible component to separately
connect each phase, wherein each connector limits use of
elastomer sealing elements by forming a mechanical, metal-to-
metal seal with the submersible component and each connector
is individually fastened and sealed to the submersible
component.
The Examiner’s Rejections
(1) The Examiner rejected claims 1, 4-6, 8-11, and 15 under
35 U.S.C. § 102(b) as anticipated by Kennedy (US 2006/0148304 A1). Ans.
3-5.
(2) The Examiner rejected claims 2, 3, 7, 12-14, and 16-29 under 35
U.S.C. § 103(a) as unpatentable over Kennedy and Ebner (US 6,910,870
B2). Ans. 5-6.
Appellants’ Contentions1
(1) Appellants contend (Br. 5-7) that the Examiner erred in rejecting
claims 1, 4-6, 8-11, and 15 under 35 U.S.C. § 102(b) as being anticipated by

1 We recognize that Appellants’ arguments present additional issues. Many
of the arguments presented by the additional issues are not persuasive;
nonetheless we were persuaded of error by this issue concerning (i) “a
plurality of individual connectors with each individual connector being
separately connectable to the submersible component” (claim 1) and
similarly recited in claim 10, and (ii) “a plurality of connectors that are
separately connectable to the submersible component” (claim 16) and
similarly recited in claim 23, and as such we do not reach the additional
issues as this issue is dispositive of the appeal.
Appeal 2011-001661
Application 12/141,468

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Kennedy for numerous reasons, including:
(a) “Kennedy’s three conductors cannot be independently
fastened to the motor head 3, but rather they are fastened/plugged as a
group via screw fasteners 30” and Kennedy fails to disclose, teach, or
suggest independently fastening a plurality of conductors to a
submersible component (Br. 6);
(b) Kennedy “fails to disclose or suggest a connector system for
connecting a power cable to a ‘submersible component power by the
three-phase electric signal’ in which the connector system has
individual connectors with ‘each individual connector being
independently fastened to the submersible component to form a sealed
connection with a submersible component independent of the other
connectors’ as recited in independent claim 1” (Br. 6-7); and
(c) Kennedy “fails to disclose or suggest ‘separately connecting
each phase of the power cable to a submersible component’ and
‘independently securing the individual connector to the submersible
component separately from the other individual connectors’ as recited
in independent claim 10” (Br. 7).
Appellant only argues claims 1 and 10 (Br. 5-7) and relies on those
arguments for claims 4-6, 8, 9, 11, and 15 (Br. 7).
(2) Appellants contend (Br. 7-9) that the Examiner erred in rejecting
claims 2, 3, 7, 12-14, and 16-29 under 35 U.S.C. § 103(a) over Kennedy and
Ebner because Kennedy fails to meet the limitations of claims 16 and 23 of
having independent connections for independently and separately connecting
individual connectors of a plurality of connectors to a submersible
component.
Appeal 2011-001661
Application 12/141,468

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Principal Issue on Appeal
Did the Examiner err in rejecting (i) claims 1, 4-6, 8-11, and 15 under
35 U.S.C. § 102(b) as anticipated by Kennedy, and (ii) claims 2, 3, 7, 12-14,
and 16-29 under 35 U.S.C. § 103(a) as unpatentable over Kennedy and
Ebner, because Kennedy does not disclose a connector system with plural
individual connectors where each individual connector is separately and
independently fastened/connected to the submersible component, as recited
in independent claims 1, 10, 16, and 23?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions in the Appeal Brief (Br. 5-9) that the Examiner has erred.
We agree with Appellants’ above contentions (1)(a) - (1)(c) and (2)
supra. Kennedy shows (Figs. 3 and 4) screws 30 for fastening the power
cable to the submersible component. As disclosed by Kennedy, “[s]crew
fasteners 30 are provided for mechanically securing the connector assembly
to the motor housing when the connector assembly is plugged into the socket
assembly” (¶ [0037], last sentence of paragraph). Separate connections for
fastening each of the wires to the motor or submersible component are
required in light of Appellants’ disclosure that “three individual and
separately connectable connectors 60” (shown in Figure 2) are used “to
enable separate connection of individual phases” (Spec. ¶ [0015]).
Therefore we do not sustain the rejections of (1) claims 1, 4-6, 8-11,
and 15 under 35 U.S.C. § 102(b) as anticipated by Kennedy, and (2) claims
2, 3, 7, 12-14, and 16-29 under 35 U.S.C. § 103(a) over Kennedy and Ebner.

Appeal 2011-001661
Application 12/141,468

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CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1, 4-6, 8-11, and 15 under 35 U.S.C. § 102(b) by Kennedy because
Kennedy does not disclose a connector system with plural individual
connectors where each individual connector is separately and independently
fastened/connected to the submersible component, as recited in independent
claims 1 and 10.
(2) Appellants have established that the Examiner erred in rejecting
claims 2, 3, 7, 12-14, and 16-29 under 35 U.S.C. § 103(a) over Kennedy and
Ebner because the limitations of independent claims 16 and 23 are not met.

DECISION
The Examiner’s rejections of claims 1-29 are reversed.

REVERSED

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