Ex Parte Bixenman et al

Board of Patent Appeals and Interferences

Jun 17, 2009

10710833 (B.P.A.I. Jun. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PATRICK W. BIXENMAN, MARK FRAKER,
EMMANUEL RIOUFOL, PAUL EBNER, and DAVID GARRETT
____________

Appeal 2009-000481
Application 10/710,833
Technology Center 3600
____________

Decided:1 June 17, 2009
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Patrick W. Bixenman et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-16 and 25-32.
Claims 17-24 are withdrawn from consideration and thus are not before us
on appeal. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants’ claimed invention is a device and method for providing a
cable in a conduit, where the cable forms a generally uniform helix along
substantially the entire length of the conduit so that the cable is uniformly
supported. Spec. para. [0002], [0007], [0022]. Claim 1, reproduced below,
is representative of the subject matter on appeal.
1. A conduit for suspension in a wellbore,
comprising:
a length of conduit; and
a cable inserted into the conduit, the cable
having buckles, each buckle adapted to contact an
interior surface of the conduit at a plurality of
locations across substantially the entire length of
conduit to prevent longitudinal movement of the
cable within the conduit, wherein the cable is
uniformly supported along the length of the
conduit.

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THE EVIDENCE
The Examiner relies upon the following as evidence of
unpatentability:
Denison US 4,095,865 Jun. 20, 1978
McHugh US 5,954,136 Sep. 21, 1999
Moore US 6,148,925 Nov. 21, 2000

THE REJECTIONS
Appellants seek our review of the following rejections:
1. The Examiner rejected claims 1, 2, 4, 5, 8, 9, 14, and 25-32 under
35 U.S.C. § 102(b) as anticipated by Moore.
2. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Moore and Denison.
3. The Examiner rejected claims 6, 7, 10, 12, 13, 15, and 16 under
35 U.S.C. § 103(a) as unpatentable over Moore and McHugh.
4. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Moore, McHugh, and Denison.

ISSUE
The Examiner found that Moore anticipates claims 1, 2, 4, 5, 8, 9, 14,
and 25-32, and that the subject matter of claims 3, 6, 7, 10-13, 15, and 16
would have been obvious over Moore in combination with either McHugh,
Denison, or McHugh and Denison. Ans. 3-6. Appellants argue that Moore
fails to disclose uniform buckling or uniform support for the cable. App. Br.
6-9; Reply Br. 6-8.
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The issue presented by this appeal is:
Have Appellants shown the Examiner erred in finding that Moore
discloses uniform buckling and uniform support for the cable?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Appellants’ Specification describes a variety of methods of
inserting a cable into a conduit that is longer in length than the
conduit, so that the cable “buckles” into a helical or arcuate shape,
putting the cable in substantially a compressed state. Spec. paras.
[0022] to [0023]. The compressive force of the cable is transferred
as a frictional force to the conduit so that downward longitudinal
movement of the cable within the conduit is prevented, i.e., the
cable is self-suspending. Spec. para. [0026].
2. Appellants’ Specification describes that “buckle” means the
longitudinal alignment of the cable in the conduit changes under
compression, and goes from being coaxial with the conduit to
being a sinusoid, spiral, helix, or other arcuate shape so that the
cable contacts the interior surface of the conduit at a plurality of
spaced longitudinal locations. Spec. para. [0026]. In contrast,
“buckling” is not “the cable being damaged either by free
suspension or excessive compressive forces.” Spec. para. [0027].
Further, “buckling” is “a purposeful, designed arrangement” that
includes consideration of: the size of the inside diameter of the
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conduit, the diameter of the cable, and the internal strength of the
cable, so that “the cable will purposefully form the desired
sinusoidal, spiral, helical, or other arcuate shape and make the
plurality of uniform points of contact with the interior surface of
the conduit with sufficient compressive frictional forces to prevent
downward longitudinal movement of the cable within the conduit.”
Spec. paras. [0027] and [0028]; see also Spec. para. [0025] (listing
consideration factors for amount of cable to produce the desired
buckling).
3. Appellants’ Specification does not provide a definition of
“uniformly supported” with regard to the support for the cable, as
used in the claims. Spec., passim.
4. Appellants’ Specification consistently describes that it is the
uniform shape of the cable that provides uniform support for the
cable. See e.g. Spec. para. [0007] and paras. [0022]-[0024].
5. The Specification describes the “uniform” shape of the cable, as:
[A]ny arcuate path will suffice as long as it spans
substantially the entire length of the conduit.
While a uniform helical or arcuate shape may be
ideal, generally, the cable may form an arcuate
path, which may include a reverse-spiral section
and/or a section defining a tighter spiral than
another section. For example, an embodiment may
include a cable defining an arcuate path within a
conduit where the cable is deployed in a tighter
spiral pattern at the bottom of the conduit [than] at
the top of the conduit. The key is that the cable
defines any arcuate path through substantially the
entire length of the conduit to increase surface
contact (and thus friction) within the conduit.
Spec. para. [0037].
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6. Moore discloses a method of manufacture of a wire line system
that involves inserting a length of conductor into an elongated
length of coiled metal tubing after the tubing has been formed.
Moore, col. 1, ll. 5-9, 62-64.
7. Moore’s method begins as tubing 34 is inserted into a well bore
(substantially vertical passageway). Moore, Fig. 5; col. 4, l. 66 to
col. 5, l. 1.
8. Then, the leading end of the conductor 36 and an attached weight
are inserted into the upper end of the tubing, and the weight and
conductor 36 fall by gravity through the tube 34. Moore, col. 3,
ll. 36-38; col. 5, ll. 1-3.
9. During insertion of conductor 36 into tubing 34, two interrelated
factors must be controlled to maintain acceptable tension in
conductor 36. First, the weight attached to the leading end of the
conductor 36 must be heavy enough “for pulling the conductor
straight and providing sufficient weight for the gravitational forces
to cause the conductor to fall to the bottom of the tubing.” Moore,
col. 5, ll. 4-9. However, the attached weight must not be so heavy
that it completely overcomes the frictional force between the outer
surface of the conductor 36 and the inner surface of the tubing 34
that is supporting the weight of the conductor. Moore, col. 4,
ll. 14-17. Second, as the weight and conductor 36 fall through the
tubing 34, the pitch of the tubing 34 is adjusted, by straightening or
relaxing tubing 34, which adjusts the tension in conductor 36 by
altering the frictional force between conductor 36 and tubing 34.
Moore, col. 7, ll. 40-47. In other words, selection of the attached
weight and adjustment of the pitch of tube 34 balances the force on
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the conductor so that there is sufficient frictional force between
conductor 36 and tube 34 to sufficiently support the weight of the
conductor and keep the tensile force acceptable, while the
frictional force is not so great as to prevent conductor 36 and the
attached weight from moving through tube 34.
10. After the weight and conductor 36 are completely inserted into
tubing 34, the wire-in-a-tube is complete and may be removed
from the well and wound onto a reel. Moore, col. 10, ll. 1-4
11. Moore discloses that when the wire-in-a-tube is in use, conductor
36 maintains a helical shape (due to inherent memory) which
supports conductor 36 inside the tube 34 through frictional
interface between the outer surface of the conductor 36 and the
inner surface of tubing 34 sufficient to support the weight of
conductor 36. Moore, col. 3, l. 65 to col. 4, l. 8.

PRINCIPLES OF LAW
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
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Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

ANALYSIS
Rejection of claims 1, 2, 4, 5, 8, 9, 14, and 25-32 under 35 U.S.C. § 102(b)
as anticipated by Moore
Appellants argue claims 1, 2, 4, 5, 8, 9, 14, and 25-32 as a group.
App. Br. 6-9. We select claim 1 as the representative claim, and claims 2, 4,
5, 8, 9, 14, and 25-32 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii)
(2008).2

2 Appellants mention claims 14, 25, 27, and 32 in their arguments against the
anticipation rejection. App. Br. 9. These claims are not presented under a
subheading identifying each claim by number. App. Br. 6-9. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2008) (“Any claim argued separately should be placed
under a subheading identifying the claim by number”). More importantly,
Appellants’ statements regarding these claims consist of nothing more than
recitations of what each claim states, and bald assertions, unsupported by
specific arguments, that the claimed limitations are not disclosed by the prior
art. The Appellants’ statements as to claims 14, 25, 27, and 32 do not
persuade us of error in the Examiner’s decision to reject those claims. See
37 C.F.R. § 41.37(c)(1)(vii) (2008) (“A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.”).
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Claim Construction
Claim 1 recites that the cable has buckles that contact the interior
surface of the conduit at “a plurality of locations across substantially the
entire length of conduit to prevent longitudinal movement of the cable
within the conduit.” The Specification defines “buckle” and “buckling” as
longitudinal alignment of the conductor in the conduit in a “sinusoid, spiral,
helix, or other arcuate shape” so that the cable contacts the conduit at a
“plurality of uniform points of contact with the interior surface of the
conduit with sufficient compressive frictional forces to prevent downward
longitudinal movement of the cable within the conduit.” (Fact 2).
Claim 1 also recites that “the cable is uniformly supported along the
length of the conduit.” Appellants’ Specification does not define “uniformly
supported” for the cable (Fact 3), but consistently refers to the “uniform”
shape of the cable within the conduit as providing “uniform” support to the
cable (Fact 4). Further evidence that the shape of the cable and the support
provided to the cable are interrelated is that the Specification discloses that
the “key” to the shape of the cable is “that the cable defines any arcuate path
through substantially the entire length of the conduit to increase surface
contact (and thus friction) within the conduit” (Fact 5). The Specification
provides that any arcuate shape is uniform “as long as it spans substantially
the entire length of the conduit.” (Fact 5). Thus, a person having ordinary
skill in the art, upon reading Appellants’ Specification, would understand
that a cable is “uniformly supported along the length of the conduit”
provided the cable has any arcuate shape that spans substantially the entire
length of the conduit.
Giving claim 1 the broadest reasonable interpretation consistent with
the Specification, a person of ordinary skill in the art would understand the
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claim to require a length of conduit with a cable inserted therein, the cable
being any arcuate shape and contacting the conduit at a plurality of locations
through substantially the entire length of the conduit with sufficient force to
prevent longitudinal movement of the cable within the conduit. Using this
claim construction, we now compare claim 1 to the reference.
Moore
It is important to distinguish Moore’s method of manufacture from
Moore’s disclosure of the use of the final device. Moore discloses a method
of manufacture of a wire line system which involves inserting a length of
conductor into an elongated length of coiled metal tubing after the tubing
has been formed using a gravity feed method (Facts 6-9). Moore discloses
that the completed wire-in-a-tube is then wound onto a reel for subsequent
use (Fact 10). Moore discloses that this method produces a device that
comprises an arcuate-shaped (helical) conductor (cable) inserted in tubing
(conduit) so that the conductor contacts the tubing with sufficient force to
prevent downward longitudinal movement of the conductor within the
tubing in use (Fact 11).
Appellants argue that Moore discloses a cable within tubing that “does
not produce a uniform buckling along the length of the assembly,” but rather
results in an assembly with the bottom of the cable “heavily buckled,” the
mid-portion possibly in tension with no buckle at all, and the upper portion
in tension. App. Br. 6. Appellants admit, by their own description of Moore
in paragraph 5 of the Spec and in the Appeal Brief at page 6, that Moore
discloses a length of conduit with a cable inserted therein and that the cable
of Moore “buckles.”3 Appellants are attempting to distinguish the prior art

3 See Appellants’ description of buckling at Fact 2.
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based on the shape of the cable within the conduit of Moore being less
consistent (i.e., uniform) than that claimed, but such a distinction is not
claimed. Appellants could have claimed the shape of the cable in more
definitive or precise terms, such as by specifying a number of coils per unit
length; however, this is not the case. Appellants chose to claim the cable in
such a way that what is required is any arcuate shape inserted in a length of
conduit so that the cable contacts the conduit at a plurality of locations
through substantially the entire length of the conduit with sufficient force to
prevent longitudinal movement of the cable within the conduit. Moore
meets this limitation by disclosing a helical cable that contacts the conduit at
a plurality of locations through substantially the entire length of the conduit
with sufficient frictional engagement between the cable and the conduit to
support the weight of the conductor and to prevent the cable from dropping
to the bottom of the conduit when in use (Fact 11).
Appellants also argue that Moore does not teach uniform support
because the portion of Moore cited by the Examiner (column 3, line 62 to
column 4, line 54) “does not indicate that the conductor or cable was placed
in the tubing prior to being inserted into the wellbore.” App. Br. 7; Reply
Br. 7. Here the method of manufacture and the use of the device should
again be distinguished.4 Moore’s device is assembled in a well bore and
then removed (Fact 10). The final product, when needed, is then inserted
into a well bore for use (Fact 11). Because of this, the portion of Moore
cited by the Examiner refers to use of the end product of Moore, which

4 Perhaps the confusion is caused by Moore’s reference to the use of the
final product before disclosure of the method of making that product (see
use of final product at column 3, l. 65 to column 4, line 8 and method of
making that product beginning at column 4, l. 62).

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contrary to Appellants’ assertion, does have the conductor/cable already
inserted (Fact 11). Appellants’ contention does not get to the issue at hand.
Whether the cable was inserted before the conduit is inserted into the well
bore or after is not the critical question. The question is whether Moore
discloses the claimed conduit, and we have determined that is does.
Appellants also argue that Moore discloses that the inherent helical
shape of the conductor (cable) must be overcome or the conductor cannot
properly fall by gravity through the coiled tubing. Reply Br. 6. Here again,
Appellants’ argument goes to the method of manufacture and not the use of
the final device. Moore discloses overcoming the helical shape of the cable
when inserting the cable in the conduit, through use of a weight and by
adjusting the pitch of the conduit (Fact 9). However, Moore discloses that
once the cable is inserted into the conduit and the wire line is complete and
removed from the well bore, the cable retains a helical shape that frictionally
engages the inside wall of the tube with sufficient force to prevent the cable
from dropping to the bottom of the conduit (Facts 10-11).
Appellants have failed to demonstrate error in the Examiner’s
decision to reject claim 1, and claims 2, 4, 5, 8, 9, 14, and 25-32 fall with
claim 1.

Rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Moore
and Denison
The Examiner found that Moore discloses all the elements of claim 3
except the conduit being jointed tubing. Ans. 5. The Examiner found that
Denison discloses jointed tubing for a well bore. Ans. 5. The Examiner
concluded it would have been obvious to modify the conduit of Moore to be
jointed tubing as taught by Denison in order to “have been able to use the
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conduit as a drill string or for the other purposes for which coiled tubing is
not optimal.” Ans. 5.
Appellants argue that claim 3 depends from claim 1 and is patentable
over the Moore reference for the reasons argued with respect to the rejection
of claim 1. App. Br. 10; Reply Br. 9. These arguments are unconvincing for
the reasons explained in the analysis of claim 1, supra.
Appellants also argue that Denison does not disclose the uniform
support recited by the claim. App. Br. 10. This individual attack fails to
demonstrate error because the Examiner found that Moore teaches uniform
support. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references).
Appellants also argue that Denison does not cure the deficiencies of
the Moore reference. App. Br. 10. This argument is irrelevant because in
the analysis of claim 1, supra, we found no deficiency in the Moore
reference that must be cured.

Rejection of claims 6, 7, 10, 12, 13, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Moore and McHugh
Appellants argue claims 6, 7, 10, 12, 13, 15, and 16 as a group. App.
Br. 10-11. As such, we select claim 10 as the representative claim, and
claims 6, 7, 12, 13, 15, and 16 stand or fall with claim 10. 37 C.F.R.
§ 41.37(c)(1)(vii) (2008).
The Examiner found that Moore discloses all the elements of claim 10
except for operatively connecting one end of the conduit to an electric
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submersible pumping system.5 Ans. 5-6. The Examiner found that McHugh
discloses using the conduit to suspend and power an electrical submersible
pumping system within a well bore. Ans. 6. The Examiner concluded that it
would have been obvious to use the conduit of Moore to suspend and power
an electric submersible pump as taught by McHugh in order to have used a
power conduit where the electrical power cable was not subject to the stress
of the weight of the pumping system. Ans. 6.
Appellants repeat the arguments of claim 1, and also argue that the
references fail to teach positioning a cable within a conduit such that the
cable contacts the interior surface of the conduit at a plurality of locations to
provide uniform support along the length of the conduit, as recited in claim
10. App. Br. 10-11.
The arguments made for claim 1 remain unconvincing for the reasons
explained the analysis of claim 1, supra. Similarly, the portion of claim 10
argued by Appellants requires the same “uniform support” analyzed in the
rejection of claim 1, supra. Appellants have failed to demonstrate error in
the Examiner’s decision to reject claim 10. Claims 6, 7, 12, 13, 15, and 16
fall with claim 10.

Rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over Moore,
McHugh, and Denison
The Examiner found that Moore discloses all the elements of claim 11
except for operatively connecting one end of the conduit to an electric
submersible pumping system, and the conduit being jointed tubing. Ans. 6.
The Examiner found that McHugh discloses using the conduit to suspend

5 The rejection states the pump is “submergible” but in this context, this is a
typographical error and the Examiner meant “submersible.” Ans. 6.
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and power an electrical submersible pumping system within a well bore.
Ans. 6. The Examiner found that Denison discloses jointed tubing for a well
bore. Ans. 6. The Examiner concluded it would have been obvious to use
the conduit of Moore to suspend and power an electric submersible pump as
taught by McHugh in order to have used a power conduit where the
electrical power cable was not subject to the stress of the weight of the
pumping system. Ans. 6. The Examiner concluded it would have been
obvious to further modify the combined device of Moore and McHugh to
use jointed tubing as taught by Denison to replace the conduit of Moore in
order to “have been able to use the conduit as a drill string or for the other
purposes for which coiled tubing is not optional.” Ans. 5.
Appellants repeat the argument used in support of claim 10 that the
references fail to teach uniform support for the cable. This argument fails to
demonstrate error by the Examiner in the rejection of claim 11 for the
reasons explained in the rejection of claim 10, supra.

CONCLUSION
Appellants have failed to show the Examiner erred in finding that
Moore discloses uniform buckling and uniform support for the cable.

DECISION
We affirm the Examiner's rejection of claims 1-16 and 25-32.
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)(1)(iv) (2007).
AFFIRMED

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