Cameron International Corporation

Patent Trials and Appeals Board

May 29, 2020

2019006242 (P.T.A.B. May. 29, 2020)

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.
15/231,945 08/09/2016 Ronald J. Manson 032529-US-NP 8337
128554 7590 05/29/2020
OneSubsea IP UK
4646 W. Sam Houston Parkway N.
Houston, TX 77041
EXAMINER
COLON MORALES, DAVID
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
05/29/2020 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):
JScott19@slb.com
USDocketing@slb.com
jalverson@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RONALD J. MANSON and MIRCEA BALAN
____________

Appeal 2019-006242
Application 15/231,945
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
AMANDA F. WIEKER, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–20 under 35 U.S.C. § 103 as being unpatentable

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Cameron International Corporation is identified as the real
party in interest in Appellant’s Appeal Brief 2 (filed Apr. 15, 2019,
hereinafter “Appeal Br.”).
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Application 15/231,945

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over Bazin,2 Chen,3 and/or Hosie.4,5 We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention relates to “a ball valve having an adjustable
seat.” Spec. para. 10.
Claims 1, 11, and 14 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A ball valve positioned between a first line and a
second line, comprising:
a housing;
a ball disposed within the housing and having a
bore, wherein the ball is configured to rotate between an open
position and a closed position;
an annular seat disposed between the housing and the
ball, wherein the annular seat comprises:
one or more first axially-facing surfaces exposed
to a valve cavity pressure within a valve cavity;

2 Bazin et al., US 7,275,564 B2, issued Oct. 2, 2007.
3 Chen et al., US 2017/0175908 A1, published June 22, 2017.
4 Hosie et al., US 6,082,707, issued July 4, 2000.
5 This appeal is taken from the Examiner’s rejection in the Advisory Action
(dated Feb. 21, 2019, hereinafter “Adv. Act.”) in combination with the
rejection in the Final Action (dated Oct. 15, 2018, hereinafter “Final Act.”).
See Examiner’s Answer 21–22 (dated June 21, 2019, hereinafter “Ans.”)
(“The appealed claims were . . . finally rejected in the Advisory Action filed
on 02/21/2019. The rejections . . . were restated [in the Answer] using the
rejections as filed in the final rejection filed 10/15/2018 in combination with
the rejections made in the Advisory action filed 02/21/2019.”).
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one or more second axially-facing surfaces
exposed to a first line pressure within the first line;
a first annular sealing ring extending
circumferentially about a radially-outer surface of the
annular seat; and
an axially-extending passageway extending
through the annular seat to enable fluid flow from the
valve cavity to an annular space between the annular
seat and the housing, wherein a first surface area of the
one or more first axially-facing surfaces is at least 10
percent greater than a second surface area of the one or
more second axially-facing surfaces, and wherein the
first surface area, the second surface area, and the first
annular sealing ring, the axially-extending passageway,
and the annular space facilitate temporary movement of
the annular seat away from the ball to provide a gap
separating the annular seat and the ball as the ball rotates
from the closed position toward the open position; and
an annular cartridge disposed between the annular seat
and the housing, wherein the annular cartridge supports an
inner sealing ring disposed against the annular seat and an outer
sealing ring disposed against the housing.

ANALYSIS
Each of independent claims 1 and 11 requires, inter alia, “a first
surface area of the one or more first axially-facing surfaces [that] is at least
10 percent greater than a second surface area of the one or more second
axially-facing surfaces.” Appeal Br. 21, 24. Similarly, independent
claim 14 requires, inter alia, “a first surface area of the one or more first
surfaces [that] is at least 10 percent greater than a second surface area of the
one or more second surfaces.” Id. at 25. Stated differently, each of
independent claims 1, 11, and 14 requires a ratio of the first surface area
(axially-facing surface area exposed to valve cavity pressure) and the second
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surface area (axially-facing surface area exposed to line pressure) to be
greater than at least 10 percent.
The Examiner first finds that Bazin’s Figure 2 illustrates the limitation
noted above, and, to better illustrate, compares annotated Figure 2 of
Appellant’s Drawings with annotated Figure 2 of Bazin, as shown below:

Appellant’s Figure 2 (left side) and Bazin’s Figure 2 (right side), as
annotated by the Examiner, compares “[a]xially-facing surfaces exposed to
valve cavity pressure” and “[a]xially-facing surfaces exposed to line
pressure.” See Final Act. 6–7; see also Ans. 4.
According to the Examiner, “a first surface area of the one or more
first axially-facing surfaces is at least 10 percent greater than a second
surface area of the one or more second axially-facing surfaces” because “the
size of the surface areas exposed to the valve cavity are at least twice, 50%,
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the size of the surfaces areas exposed to the line pressure.” Final Act. 7;
Ans. 4.
We appreciate 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). However, Appellant is correct that “Bazin does not
indicate that the drawings are [drawn] to scale,” and, regardless, “the cross-
sectional view shown in FIG. 2 of Bazin merely shows one cut through the
ball core 18, the housing 12, the seat carrier 22, and other structures,” and,
thus, “the illustrated structures are not necessarily symmetric about the
central axis.” Appeal Br. 18 (emphasis added); see also Reply Br. 9–10.6
Moreover, we note that the “[a]xially-facing surfaces exposed to valve
cavity pressure,” illustrated in the Examiner’s annotated Figure 2 of Bazin,
include an aperture, whose diameter, and, thus, area, is unknown.
Accordingly, we agree with Appellant that a skilled artisan observing
Bazin’s Figure 2 would not be able to reasonably determine the ratio
between the areas of the first and second axially-facing surfaces to be
“greater than at least 10 percent.” Id. In other words, just because the
Examiner has identified in one cross-section lines corresponding to the
claimed first and second axially-facing surfaces, this does not mean that the
area of the first surface is “at least 10 percent greater” than the area of the
second surface, as called for by each of independent claims 1, 11, and 14.
Nonetheless, the Examiner further finds that
Alternatively, one of ordinary skill in the art can recognize that
the relative size of the surfaces areas exposed to valve cavity
pressure and the size of the surfaces areas exposed to line
pressure of the device of Bazin may be modified so long as the

6 Appellant’s Reply Brief, filed Aug. 21, 2019.
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modification continues to achieve the same or similar
results/benefits as those taught by Bazin.

Final Act. 8 (emphasis omitted). Hence, the Examiner concludes that it
would have been obvious for a person of ordinary skill in the art to
“modify/optimize the sizes of the surface areas exposed to valve cavity
pressure and of those exposed to line pressure to have any desired relative
size . . . such as having the first surface area be at least 10 or 25 percent
greater than the second surface area.” Id. at 8–9. According to the
Examiner, by “optimizing the relative size of surfaces areas, it allows an
user/designer to improve the response of the valve seat to fluid pressure
coming from either side of the valve seat and thus also improving the valve
seat’s effectiveness.” Id. at 9 (citing MPEP § 2144.05 II. A); see also
Ans. 6, 36–37 (“[N]otice that by increasing the areas exposed to fluid
pressure on either side, it allows for greater force to be applied to the valve
seat assembly.”)
We appreciate the Examiner’s position that it is not inventive to
discover optimum or workable ranges by routine experimentation.
However, optimization is premised on the optimized variable being a
“result-effective variable.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977).
In this case, the Examiner fails to adequately show that a person of ordinary
skill in the art would have considered the ratio of the first and second
axially-facing surface areas to constitute a result-effective variable, namely,
a variable known to affect a particular result. The Examiner’s general
statement regarding the effect of surface area exposed to fluid pressure on
the resulting force does not specifically explain the effect of the ratio of the
first and second axially-facing surface areas on the function of Bazin’s valve
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assembly. See Ans. 37; Final Act. 9. Hence, the Examiner has not
persuasively shown that the ratio of the first and second axially-facing
surface areas achieves a recognized result; and, thus, has not shown by a
preponderance of the evidence that the claimed ratio is result effective.
Furthermore, we do not agree with the Examiner’s position that
Bazin’s valve assembly can be modified to have any ratio of the first and
second axially-facing surface areas as long as it “continues to achieve the
same or similar results/benefits.” See Ans. 36; Final Act. 8–9. Such a
position does not mean that every ratio of the first and second axially-facing
surface areas is obvious to try, without evidence or reasoning tending to
demonstrate the obviousness of the particularly claimed configuration.
Appellant is correct that it is not clear from the rejection whether modifying
the ratio of the surface areas in Bazin to be greater than 10% would not
adversely impact Bazin’s anti-cocking and constant seal features, and, thus,
Bazin’s valve would no longer function as described. See Reply Br. 10; see
also Bazin, col. 2, lines 24–26.
In conclusion, as the Examiner does not employ the disclosures of
Chen and Hosie to remedy the deficiency of Bazin, or the modification of
Bazin, as discussed supra, we do not sustain the rejection of claims 1–20
over the combined teachings of Bazin, Chen, and/or Hosie. See Adv.
Act. 2–3; Ans. 6–9.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–20 103 Bazin, Chen,
Hosie
1–20
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REVERSED