Ex Parte Biester

Patent Trial and Appeal Board

Jul 30, 2013

10564584 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/564,584 01/13/2006 Klaus Biester OTE-030586
(CMRN0184/SWA)
1775
64833 7590 07/30/2013
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
STIMPERT, PHILIP EARL
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
07/30/2013 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 KLAUS BIESTER
____________

Appeal 2011-007966
Application 10/564,584
Technology Center 3700
____________

Before: JOHN C. KERINS, WILLIAM A. CAPP and
BEVERLY M. BUNTING, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-6, 8-13, 16, 33, 35-39 and 42-47. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s invention relates to pump for hydraulic actuation of a
valve. Spec. 1, para [0003]. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. Pump device for the hydraulic actuation of a valve for
a pipeline or a tree used in the production of crude oil or natural
gas, the pump device comprising:
a piston-cylinder unit having a piston within a cylinder,
the cylinder having a first port in fluid communication with the
valve and a second port, the piston travelling to a first position
forcing hydraulic fluid in the cylinder out the first port under
pressure and travelling to a second position drawing hydraulic
fluid through the second port and into the cylinder;
an electrical drive movably connected to the piston of the
piston-cylinder unit for the alternating movement of the piston
in a piston longitudinal direction inside the cylinder;
a discharge pipe coupled between the first port and the
valve, the discharge pipe operable to deliver hydraulic fluid
from the piston-cylinder unit to the valve for actuating the
valve;
a discharge pipe pressure sensor operable to sense a
pressure of the hydraulic fluid in the discharge pipe and outside
the cylinder; and
a branch pipe coupled to the discharge pipe between the
first port and the valve, the branch pipe operable to divert
hydraulic fluid from the valve when a pressure of the hydraulic
fluid within the discharge pipe exceeds a predetermined value,
whereby the pressure of hydraulic fluid within the discharge
pipe is controlled.

Appeal 2011-007966
Application 10/564,584
- 3 -
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 1-6, 8-13, 16, 33, and 35-39 are rejected under 35 U.S.C.
112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant regards as the
invention.
2. Claims 1, 10-13, 16, 33, 35, 37 and 42-46 are rejected under 35
U.S.C. § 103(a), as being unpatentable over Dietz, Yie and Salina.
3. Claims 2-5 and 47 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietz, Yie, Salina and Giese.
4. Claims 6 and 39 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietz, Yie, Salina, Giese and Flinchbaugh.
5. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietz, Yie, Salina, Giese, Flinchbaugh and Campbell.
6. Claims 36 and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietz, Yie, Salina, Giese, and Hommel.
Giese
Campbell
Flinchbaugh
Salina
Yie
Hommel
Dietz
US 1,852,560
US 3,261,591
US 4,398,110
US 4,442,395
US 4,862,911
US 6,208,923 B1
US 2002/0108747 A1
Apr. 5, 1932
Jul. 19, 1966
Aug. 9, 1983
Apr. 10, 1984
Sep. 5, 1989
Mar. 27, 2001
Aug. 15, 2002
Appeal 2011-007966
Application 10/564,584
- 4 -
OPINION
Section 112 Indefiniteness
The Examiner rejected claims 1-6, 8-13, 16, 33, and 35-39 because
the limitation “a pressure of hydraulic fluid” is positively recited twice using
the indefinite article “a” and, therefore, it is unclear whether the recited
pressures are the same. Ans. 4.
The record indicates that Appellant filed an amendment on August 24,
2010. See Response to Final Office Action that was dated August 24, 2010
(hereinafter “Amendment”). In the Amendment, Appellant twice replaced
the indefinite article “a” with the definite article “the” immediately before
recitation of the term “hydraulic fluid.” Id. (See, Amended Claim 1).
Subsequently, the Examiner indicated that the Amendment would be entered
for purposes of Appeal. See Advisory Action dated September 16, 2010.
The Amendment obviated the Examiner’s rejection over the indefinite article
“a.” Accordingly, we do not sustain the Examiner’s section 112 rejection of
claims 1-6, 8-13, 16, 33, and 35-39.
Unpatentability of Claims 1, 10-13, 16, 33, 35, 37 and 42-46
over Dietz, Yie and Salina.
Appellant argues claims 1, 10-13, 16, 33, 35, 37 and 42 as a group and
then raises a separate argument for patentability of claims 35, 43 and 44-46.
App. Br. 12-15. We select claim 1 as representative of the group. See 37
C.F.R. § 41.37(c)(1)(vii) (2011). We address claims 35, 43 and 44-46
separately.
Claims 1, 10-13, 16, 33, 37 and 42
The Examiner finds that Dietz discloses all of the elements of claim 1
except that it lacks express disclosure of a piston type pump and also lacks a
Appeal 2011-007966
Application 10/564,584
- 5 -
pressure sensor. Ans. 4-6. The Examiner relies on Yie as disclosing a high
pressure pump and valve arrangement with a piston and cylinder that has
first and second ports. Ans. 5. The Examiner relies on Salina as disclosing
actuation of a valve in response to a pressure switch. Ans. 6. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to combine Yie and Salina with Dietz to
achieve the claimed invention. Ans. 6-7. According to the Examiner, a
person of ordinary skill in the art would use a pump as taught by Yie
because Dietz contemplates using a conventional pump to provide hydraulic
fluid to a valve. Ans. 5. Also, according to the Examiner, a person of
ordinary skill in the art would provide a pressure sensor/switch to trigger
release of a control valve. Ans. 6-7.
Appellant traverses the Examiner’s rejection by arguing that Dietz
does not disclose a hydraulically actuated valve, or a discharge pipe, or a
branch pipe. App. Br. 12-14. Appellant argues that Dietz’ valve 61 is
mechanically activated and that valve 104 is electrically actuated. App. Br.
12-13.
The Examiner responds by clarifying that the claimed safety valve is
disclosed by at least bore closure assembly 60, flapper 61, and shaft 110.
Ans. 16. The Examiner states that Dietz explicitly considers the
embodiments of Figures 4 and 5 to be hydraulically actuated. Id. The
Examiner considers all of the elements leading to actuation of the flapper 61
to be part of the safety valve as a whole, and that the Examiner’s position
explicitly includes shaft 110 as part of the safety valve. Ans. 16-17. Finally,
the Examiner rebuts Appellant’s argument by noting that any argument that
the system in general or that the flapper 61 in particular is not hydraulically
Appeal 2011-007966
Application 10/564,584
- 6 -
actuated ignores the teachings of Dietz that the pump is activated for the
express purpose of actuating the mechanical linkage to thereby actuate the
flapper. Ans. 17.
We have carefully considered all of Appellant’s arguments and find
that they are not supported by a preponderance of the evidence. Dietz
discloses a hydraulically actuated valve. See Dietz Fig. 4, para [0024]. We
agree with the Examiner’s rationale at pages 15-17 of the Answer that, in
essence, the interposition of some mechanical components between the
hydraulic actuator and valve 61 does not negate the fact that Dietz discloses
the hydraulic actuation of a valve within the scope of claim 1. Appellant’s
arguments regarding Dietz’ alleged lack of a discharge pipe or branch pipe
cannot be factually supported by a review of Figure 4 and the accompanying
teaching disclosure. Dietz, Fig. 4; para [0024].
Appellant does not otherwise challenge that Yie discloses a piston
type pump or that Salina discloses a pressure sensor/switch. Neither does
Appellant challenge the Examiner’s position that Dietz, Yie and Salina are
combinable references. We are not persuaded that the Examiner erred in
rejecting claim 1 and we hereby sustain the rejection of claims 1, 10-13, 16,
33, 37 and 42-46.
Claim 35
Claim 35 depends from claim 16 and adds the limitation: “wherein a
quick-release coupling device is arranged between the pump housing and a
hydraulic fluid supply pipe.” Clms. App’x. The Examiner finds that Dietz
discloses a quick-release coupling 47. Ans. 8. Appellant argues that Dietz
element 47 is a threaded joint, not a quick release coupling. App. Br. 14
Appeal 2011-007966
Application 10/564,584
- 7 -
The Examiner responds that there is no generally accepted definition
of what constitutes a quick release coupling. Ans. 18. Otherwise, the
Examiner observes, and Appellant does not dispute, that the Specification
does not provide an operational definition of the term “quick-release
coupling” that would exclude a threaded joint under the broadest reasonable
construction of the term.1 We discern no error in the Examiner’s position
and, accordingly, sustain the rejection of claim 35.
Claim 43
Claim 43 is an independent claim that is substantially of the same
scope as claim 1, except that the recited valve is a “safety” valve. Clms.
App’x. The Examiner finds that valve 61 of Dietz is a safety valve. Ans. 8,
14, 15. Appellant argues that Dietz does not disclose a safety valve or a
discharge pipe as claimed. App. Br. 14. Appellant also argues that
hydraulic fluid is not delivered to flapper 61. Id.
Dietz discloses a down-hole, subsurface safety valve for use in a
hydrocarbon producing well. Dietz, Abstract; para [0005], [0014], claim 1.
A preponderance of the evidence supports the Examiner’s position that Dietz
discloses a safety valve.
Otherwise, we have previously addressed the discharge pipe issue and
delivery of hydraulic fluid to flapper 61 in our treatment of claim 1 above.
We sustain the rejection of claim 43.

1 During examination of a patent application, pending claims are
given their broadest reasonable construction consistent with the
specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004).
Appeal 2011-007966
Application 10/564,584
- 8 -
Claims 44-46
Appellant argues claims 44-46 as a group. App. Br. 14-15. We select
claim 44 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Independent claim 44 is substantially the same in scope as claim 1, except
that it recites a valve on a “subsea tree.” Clms. App’x. As with claim 1,
Appellant argues that Dietz valve 61 is mechanically actuated and does not
receive hydraulic fluid. App. Br. 14-15. This argument fails for the same
reasons recounted above with respect to claim 1. We sustain the rejection of
claims 44-46.
Unpatentability of Claims 2-5 and 47
Appellant argues claims 2-5 and 47 as a group. App. Br. 14-15. We
select claim 47 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Independent claim 47 is substantially similar in scope to claim 1 except that
it includes a limitation directed to: “an electrical drive device movably
connected to gears for rotating an axially immovable threaded spindle nut
threadingly engaging an axially movable threaded spindle connected to the
piston of the piston-cylinder unit to move the piston in a longitudinal
direction inside the cylinder as the threaded spindle nut threads onto the
threaded spindle.” Clms. App’x. In traversing the rejection, Appellant relies
solely on the same arguments that we have previously considered with
respect to claim 1. App. Br. 15. We sustain the rejection of claims 2-5
and 47 for the same reasons recounted above with respect to claim 1.
Unpatentability of Claims 6 and 39
Claims 6 and 9 depend indirectly from claim 1. Clms. App’x. In
traversing the rejection of these claims, Appellant relies solely on the same
arguments that we have previously considered with respect to claim 1. App.
Appeal 2011-007966
Application 10/564,584
- 9 -
Br. 15. We sustain the rejection of claims 6 and 39 for the same reasons
recounted above with respect to claim 1.
Unpatentability of Claims 8 and 9
Claims 8 and 9 depend indirectly from claim 1. Clms. App’x. In
traversing the rejection of these claims, Appellant relies solely on the same
arguments that we have previously considered with respect to claim 1. App.
Br. 15. We sustain the rejection of claims 8 and 9 for the same reasons
recounted above with respect to claim 1.
Unpatentability of Claims 36 and 38
Claims 36 and 38 depend directly or indirectly from claim 1. Clms.
App’x. In traversing the rejection of these claims, Appellant relies solely on
the same arguments that we have previously considered with respect to
claim 1. App. Br. 15. We sustain the rejection of claims 36 and 38 for the
same reasons recounted above with respect to claim 1.
DECISION
The decision of the Examiner to reject claims 1-6, 8-13, 16, 33, and
35-39 as indefinite under 35 U.S.C. 112, second paragraph, is REVERSED..
The decision of the Examiner to reject claims 1-6, 8-13, 16, 33, 35-39
and 42-47 as unpatentable under 35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

rvb