Ex Parte Calderoni et al

Board of Patent Appeals and Interferences

May 21, 2012

11673896 (B.P.A.I. May. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANGELO CALDERONI and FABRIZIO ZAUSA
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Appeal 2010-005647
Application 11/673,896
Technology Center 3600
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Before KEN B. BARRETT, PHILLIP J. KAUFFMAN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005647
Application 11/673,896

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), of claims 1-11
which have been twice rejected1. Appellants’ representative presented oral
argument on May 3, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The Claimed Subject Matter
Claim 1 is illustrative of the claims on appeal and is reproduced
below:
1. A centralizer for an oil well drill casing consisting of:
at least one strip of ceramic or plastic material applied onto an
outer wall of said casing.

Reference Relied on by the Examiner
Nilberg US 4,423,981 Jan. 3, 1984

The Rejections on Appeal
1. Claims 1-3 and 7-11 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Nilberg (Ans. 3).
2. Claims 4-6 are rejected under 35 U.S.C. § 102(e) as being anticipated
by Nilberg or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Nilberg (Ans. 3).

1 Appellants state that claims 1-11 were “finally rejected” in the Office
Action dated Sep. 9, 2008 but this was a non-final office action (Br. 1).
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Application 11/673,896

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ANALYSIS
The rejection of claims 1-3 and 7-11
as anticipated by Nilberg
Appellants present separate arguments for independent claims 1 and 7
(Br. 3, 6). Dependent claims 2, 3 and 8-11 will stand or fall with their
respective parent claim (37 C.F.R. § 41.37(c)(1)(vii) (2011)).
Claim 1
Claim 1 requires a centralizer for an oil well drill casing consisting of
at least one strip of material applied to an outer wall of the casing. The
Examiner states that Nilberg discloses a centralizer 29 applied to an outer
wall of casing 4 (Ans. 3 referencing Nilberg’s Figs. 4a and 4b). The
Examiner further states that “[t]he liner/centralizer (col. 8 lines 6-11) of
Nilberg is capable of performing all the limitations of the claimed invention
and thus meets the limitation of being a casing with a centralizer” (Ans. 4).
The Examiner further notes “the intended use of ‘for an oil well drill
casing’” and thus, “the limitations currently in the claim would only require
an equivalent centralizer” (Ans. 4).
Appellants discuss Nilberg’s centralizer 29 and lining segment 4 and
state that “[i]n contrast, independent Claim 1 is directed to ‘a centralizer for
an oil well drill casing…’” which is distinct from the teachings of Nilberg
(Br. 4). Appellants’ Specification discusses the “lowering of the casings into
the well” and that there is space “between the external casing diameter and
the hole diameter” (Spec. ¶ [0004], see also ¶¶ [0005]-[0010]). Nilberg
likewise discloses lowering multiple segments into a hole and that there is
space between the external diameter of the segments and the hole (Nilberg
Title, Abstract, 2:50-53 and Figs. 1-3). In view of the Examiner’s findings
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Application 11/673,896

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regarding Nilberg, the “examiner respectfully traverses” Appellants’
assertion that Nilberg’s segments “do[] not anticipate the ‘oil well drill
casing’ of the present claims” (Ans. 4). The Examiner states that “there is
nothing in the claims that differentiates the liner of Nilberg with the oil well
drill casing of the present invention” (Ans. 4). Appellants’ argument is not
persuasive and Appellants have not cogently explained why the Examiner’s
broad construction consistent with the Specification is improper.
Accordingly, Appellants have not shown Examiner error in finding that
Appellants’ recited casing is disclosed by Nilberg’s segments (Ans. 3, 4).
Appellants also argue that “Nilberg relies on the existence of a
previously created straight bore hole for proper insertion and alignment” (Br.
4). This contention is misplaced because Nilberg acknowledges that the
individual segments lowered into the bore hole may possibly incur “bending
stress due to shaft hole deviations from a straight line” (Nilberg 3: 17-18).
Accordingly, Appellants’ contention is not persuasive of Examiner error in
applying the teachings of Nilberg.
Appellants also state that because Nilberg relies on a straight bore
hole, “the lining segments have nothing to do with centralization…but
instead only serve to provide a lining for subsequently inserted tubes” (Br.
4). Appellants also provide illustrations that “show the differences between
centralization and lining” (Br. 4-5). Claim 1 is directed to a centralizer and
the Examiner specifically identifies Nilberg’s centralizers 29 applied to the
outer wall of segments 4 (Ans. 3; Nilberg 8:6-10). Appellants’ focus on
Nilberg’s teaching of lining segments and not on Nilberg’s teaching of
centralizers is not persuasive (Br. 5).
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Appellants also contend that the claimed invention “includes
centralizers on an outer wall of a casing, where the casing must be in the
center of the hole” and that “as Nilberg only describes a lining system, it is
respectfully submitted that Nilberg does not teach or suggest a centralizer
for an oil well drill casing consisting of at least one strip” (Br. 5). We
disagree with Appellants’ assessment of Nilberg since Nilberg discloses
centralizers 29 positioned around the outer wall of Nilberg’s segments for
proper alignment within the hole (Nilberg 8:6-10, Figs. 3a and 3b).
Additionally, the patentability of a claim depends on the claimed structure,
not on the use or purpose of that structure and accordingly, Appellants’
contentions are not persuasive in view of the record presented. We sustain
the Examiner’s rejection of claim 1 and dependent claims 2, 3 and 10).
Claim 7
Independent claim 7 requires a casing and “a centralizer applied onto
an outer wall of said casing, said centralizer consisting of at least one strip of
ceramic or plastic material” (see also Br. 6). Appellants dispute the
Examiner’s application of the teachings of Nilberg to claim 7 for the reason
that “[a]s noted above, Nilberg only describes a lining system, not a
centralizing system” (Br. 6). Appellants’ assertion is contrary to Nilberg
which expressly describes and illustrates “a plurality of centralizers such as
29” (Nilberg 8:7-8, Figs. 4a and 4b). Accordingly, Appellants’ assertion is
not persuasive and, in view of the record presented, we sustain the
Examiner’s rejection of claims 7-9 and 11.

Appeal 2010-005647
Application 11/673,896

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The rejection of claims 4-6
as anticipated or unpatentable over Nilberg
Appellants argue claims 4-6 together as a group and we select
independent claim 4 for review with dependent claims 5 and 6 standing or
falling with claim 4 (Br. 10). Independent claim 4 specifies several steps
using an oil well casing having material applied to its outer wall. The
Examiner states that Nilberg’s Figures 4a and 4b disclose “a centralizer that
has a strip (29) of hardening epoxy resin” that is applied to “an outer wall of
the casing” (Ans. 3). The Examiner further states that “[c]laims 4-6 appear
to be product-by-process claims” and as such, the “determination of
patentability is based on the product itself” (Ans. 3).
Appellants do not dispute the Examiner’s ‘product-by-process’
determination but instead Appellants repeat the argument that “Nilberg only
describes a lining system for a hole” and that “Nilberg does not teach or
suggest a centralizer for an oil well drill casing consisting of at least one
strip” (Br. 10). For the reasons stated above, Appellants’ contentions are not
persuasive and based on the record presented, we sustain the Examiner’s
rejection of claims 4-6.

DECISION
The Examiner’s rejections of claims 1-11 are 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).

AFFIRMED

MP