Ex Parte Cain et al

Patent Trial and Appeal Board

Aug 14, 2017

13785142 (P.T.A.B. Aug. 14, 2017)

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.
13/785,142 03/05/2013 David Cain 111078-029201US 6881
102197 7590 08/16/2017
Chamberlain, Hrdicka, White, Williams
& Aughtry, P.C.
1200 Smith Street, 14th Floor
Houston, TX 77002
EXAMINER
MAYO-PINNOCK, TARA LEIGH
ART UNIT PAPER NUMBER
3671
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
Patents @ chamberlainlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CAIN, WILLIAM F. PUCCIO, and SHIAN J. CHOU
Appeal 2016-0007721
Application 13/785,142
Technology Center 3600
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Cain et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 1-20 under 35 U.S.C.
§ 102(b) as anticipated by Gibb (US 4,662,785, issued May 5, 1987). Final
Office Action (October 7, 2014) (hereinafter “Final Act.”). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Cameron International Corporation is the applicant as provided in
37 C.F.R. § 1.46 and the real party in interest. Appeal Brief 3 (April 6,
2015) (hereinafter “Appeal Br.”).
Appeal 2016-000772
Application 13/785,142
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “[djrilling and producing
offshore oil and gas wells.” Spec. ^ 1. Claims 1 and 11 are independent.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below.
1. An offshore system for a subsea well, including:
a subsea riser including sections of pipe;
a riser tension system capable of dynamically
compensating for movement while providing tension to the riser;
and
at least two of the riser sections being connected with a
connector such that a portion of the riser is able to withstand a
compressive load.
Appeal Br. 12 (Claims Appendix).
ANALYSIS
Appellants argue claims 1-20 as a group. Appeal Br. 9-10. We
select claim 1 as the representative claim, and claims 2-20 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Gibb discloses the offshore system for a
subsea well as recited in claim 1, including “at least two of the riser sections
being connected with a connector (32) such that a portion of the riser is able
to withstand a compressive load.” Final Act. 2. In particular, because the
claim “lack[s] any quantifying limitation,” the Examiner interprets “a
compressive load” to mean “any type of compressive load no matter how
miniscule the magnitude.” Id. at 4. The Examiner finds that Gibb’s
connector 32 is “capable of transferring and withstanding a compressive
load between riser pipe sections.” Id. at 4-5 (emphasis added).
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Application 13/785,142
Appellants assert that “the mere capability of Gibb’s connector 32 to
withstand compression is not the proper standard for anticipation.” Id.
(citing In re Giannelli, 739 F.3d 1375, 1379-80 (Fed. Cir. 2014) (emphasis
added)). Appellants contend that “the Examiner should determine whether
Gibb’s connector, when used as intended by Gibb, would necessarily or
inherently teach the claimed subject matter.” Appeal Br. 10 (emphasis
added).
We find no error in the Examiner’s interpretation of the language of
claim 1 to encompass a portion of the riser “capable of’ withstanding a
compressive load. In particular, the claim recites “at least two of the riser
sections being connected with a connector such that a portion of the riser is
able to withstand a compressive load.” Appeal Br. 12 (Claims App.)
(emphasis added). Appellants chose to recite this aspect of the riser
functionally by reference to its ability to withstand a compressive load.
By contrast, in Giannelli, the question before the court was whether
the patent application’s claim language reciting a “first handle portion
adapted to be moved from a first position to a second position by a pulling
force ... in a rowing machine” was rendered obvious by a prior art chest
press machine. 739 F.3d at 1379. The court looked to the written
description of the application and determined that the phrase “adapted to” in
view of the specification, has a narrower meaning than “capable of’ or
“suited for.” Id. (contrasting the narrower meaning of “adapted to” as
meaning “made to,” “designed to,” or “configured to,” with the broader
meaning of “capable of’ or “suitable for”). See also Aspex Eyewear, Inc. v.
Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (holding that
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Appeal 2016-000772
Application 13/785,142
“adapted to” in the claim at issue had the narrower “configured to” meaning,
which required elements to be “designed or configured to accomplish the
specified objective, not simply that they can be made to serve that purpose”).
The Court in Giannelli determined that the prior art chest press machine did
not have handles adapted to be pulled in a rowing motion because such a
motion of the handles was contraindicated by the prior art itself, and that the
proper inquiry the Board should have made was “whether it would have
been obvious to modify the prior art apparatus to arrive at the claimed
rowing machine.” Giannelli, 739F.3dat 1380.
The claim before us in the instant appeal does not employ the phrase
“adapted to.” Rather, claim 1 recites the language “is able to,” which is akin
to the broader meaning of “capable of’ referred to by the court in Giannelli.
Indeed, a review of Appellants’ Specification shows the use of the same
“able to” language. Paragraph 20 of Appellants’ Specification describes that
“[t]o prevent the riser from otherwise buckling, the riser 14 includes
compression connectors 80 that are designed to be strong enough such that
at least a portion of the riser 14 is able to withstand a compressive load.”
(Emphasis added.) Paragraph 20 further describes that “the riser 14 need
only include at least one compression connector 80 such that a portion of the
riser 14 may withstand being placed in compression.” We agree with the
Examiner that the language employed in claim 1 encompasses two riser
sections connected with a connector such that a portion of the riser is
capable of withstanding a compressive load.
Based on our interpretation of the claim language, the issue presented
by this rejection is similar to the issue before the court in In re Schreiber,
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Appeal 2016-000772
Application 13/785,142
128 F.3d 1473 (Fed. Cir. 1997). Schreiber’s patent application claimed a
popcorn dispensing device that was conically shaped with a large opening to
fit on a container and a smaller opening at the opposite end through which
popped popcorn could pass. Id. at 1474. Claim 1, directed to the device,
was rejected as anticipated by the Harz patent, which disclosed a spout for
nozzle-ready canisters that is useful for dispensing oil from an oil can. Id. at
1475. Schreiber argued that the functional limitations of the claim
distinguished it from Harz. The Board affirmed the Examiner’s rejection,
concluding that several recitations in the claim merely set forth the function
of the top and did not require any structural feature other than those taught
by Harz and finding that Harz’s oil dispensing device was capable of
performing the recited functions. Id. at 1476. The Federal Circuit affirmed
the Board’s decision, stating that “[a] patent applicant is free to recite
features of an apparatus either structurally or functionally.” Id. at 1478. The
court cautioned that defining an element functionally, i.e., by what it does,
carries with it a risk:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
Id. (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)).
The Examiner finds that “the connector (32) of Gibb[] includes a
lower tapered end (Figs. 3-5) which engages the outer surface of a lower
adjacent riser pipe (18), thereby capable of transferring and withstanding a
compressive load between riser pipe sections as recited in the claims.” Final
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Application 13/785,142
Act. 4. The Examiner further finds that the riser sections and connectors
depicted in cross-section in Gibb are metallic and “thus, inherently impart
strength to a portion of the riser capable of withstanding a compressive
load.” Ans. 3 (citing MPEP § 608.02); see also Gibb, Fig. 11 (showing riser
sections 16 and collet connector in cross-section). As noted by the
Examiner, claim 1 does not specify any particular amount of compressive
load that the portion of the riser must withstand. We find the Examiner
established a sound basis for finding that at least a portion of the riser of
Gibb is capable of withstanding a compressive load, as recited in claim 1.
Thus, the Examiner correctly found that Gibb establishes a prima facie case
of anticipation.
The burden thus shifted to Appellants to show that Gibb’s structure
does not inherently possess the functionally defined limitations of the
claimed apparatus. Schreiber, 128 F.3d at 1478. For the reasons that
follow, Appellants’ arguments fail to make such a showing.
For example, we disagree with Appellants’ contention that “Gibb does
not expressly teach the riser being subjected to compressive loading, such as
a result of it’s [sic] own weight.” Appeal Br. 10; see also id. at 9 (“Gibb
never teaches that the connector 32 withstands a compressive load, or is
even designed to do so.”); Reply Br. 6 (“Gibb ... is completely silent with
respect to any compression or compressive load experienced by the riser.”).
As noted by the Examiner, Gibb discloses, “In use risers are subjected to
loads due to waves, currents and the risers[’] own weight. These loads cause
the riser to bend. In order to keep the bend or sag to a minimum the riser is
tensioned.” Gibb, col. 3,11. 46^19 (emphasis added). We agree with the
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Application 13/785,142
Examiner that this disclosure in Gibb indicates that the tension system of
Gibb minimizes, but does not eliminate completely, compressive loads on
the riser. See Ans. 5 (“as stated by Gibb, pretensioning minimizes
compressive loading on the prior art riser” and “[t]he very fact that the prior
art riser experiences any bend or sag along a portion of its length is evidence
that the riser is subjected to compressive loading under its own weight”); see
also Gibb, col. 4,11. 15-19 (discussing the “compressive preloaded cross-
section area” of the collet connector).
Appellants further contend that “Gibb . . . specifically notes that the
riser must be in tension to prevent failure” and that “Gibb in fact specifically
affirms that each individual tubing string of the riser is tensioned at the
surface, as the components of the riser system are not capable of
withstanding compression.” Id. at 10 (citing Gibb, col. 3,11. 15-20, 45-51);
see also Reply Br. 6 (“Gibb is designed to overcompensate with tension to
prevent any compression upon the riser system.”) (citing Gibb, col. 4,11. 30-
33). We disagree with Appellants’ characterization of Gibb.
In the portion of Gibb relied on by Appellants for this argument, Gibb
describes a collet connector that is used to minimize fluctuations in tensile
stresses experienced by the connector to improve fatigue characteristics of
the connector. Gibb, col. 4,11. 5-15. Gibb minimizes fluctuations of the
tensile stresses by “ensuring that the connection is preloaded and that the
tensile preloaded cross-sectional area is small relative to the compressive
preloaded cross-sectional area.” Id. at col. 4,11. 15-19. The tensile loads are
taken by a long finger collet 40 on the outside of a box 42 and pin 44, so that
the strain in it due to deflection of the box is small. Id. at col. 4,11. 20-33.
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Appeal 2016-000772
Application 13/785,142
Gibb does not disclose that this collect connector, or the tensioning system,
is designed to prevent any compression upon the riser system, and does not
disclose that the riser and connector are incapable of withstanding any
compressive load. Rather, Gibb at least implies that the connector is subject
to compressive load in that the connection has a compressive preload. See
also Gibb, col. 5,11. 1-13 (describing that the locking sleeve 46 protects the
collet fingers from being subjected to “compressive loads that would buckle
the fingers”).
Appellants have failed to rebut the Examiner’s findings that the riser
is subject to some amount of compressive load and that the connector of
Gibb is capable of withstanding a compressive load. Thus, we agree with
the Examiner’s finding that Gibb discloses “at least two riser sections being
connected with a connector such that a portion of the riser is able to
withstand a compressive load,” as recited in claim 1. For these reasons, we
sustain the rejection of claims 1-20 under 35 U.S.C. § 102(b) as anticipated
by Gibb.
DECISION
The decision of the Examiner rejecting claims 1-20 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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