Ex Parte DYKSTRA et al

Patent Trial and Appeal Board

Jun 24, 2016

13659323 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/659,323
49431 7590
Locke Lord LLP
P.O. Box 55874
Boston, MA 02205
FILING DATE FIRST NAMED INVENTOR
10/24/2012 Jason D. DYKSTRA
06/28/2016
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2011-IP-042544 Ul US 3116
EXAMINER
WANG, WEI
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON D. DYKSTRA, MICHAEL L. FRIPP,
LIANG ZHAO, and FREDERIC PEL TEN
Appeal2014-005350
Application 13/659,323
Technology Center 3600
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
AMANDA F. WIEKER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jason D. Dykstra et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 8-11, 14, 18-22, 26, 28, 29,
37-39, 42--49,and 57-59. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Claims 12, 13, 15, 23-25, 27, 40, and 41 have been withdrawn from
consideration. Final Act. 1 (Office Action Summary); Appeal Br. 22-26,
Claims App. Claims 1-7, 16, 17, 30-36, 50-56, and 60-66 have been
canceled. Appeal Br. 21, 23, 26, 28, 29, Claims App.
Appeal2014-005350
Application 13/659,323
THE CLAIMED SUBJECT MATTER
Claim 8, reproduced below, is illustrative of the claimed subject
matter.
8. A variable flow resistance system for use with a subterranean
well, the system comprising:
a fluid switch which directs a flow of a fluid composition
to at least first and second flow paths; and
a structure which displaces in response to the flow of the
fluid composition, whereby a resistance to the flow of the
fluid composition changes in response to a change in a ratio
of desired to undesired fluid in the fluid composition, and
wherein the structure pivots, and thereby varies the resistance to
flow, in response to a change in a proportion of the fluid
composition which flows through the first and second flow
paths.
REJECTIONS2
I. Claims 8-11, 14, 18-22, 26, 28, 29, 37-39, 42--49, and 57-59
stand rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
2 Appellants present arguments contesting the Examiner's objection to the
drawings. Appeal Br. 13-14. However, as the Examiner points out (Ans.
5), the propriety of the objection to the drawings under 37 C.F.R. § 1.83 is
reviewable by petition (MPEP § 1002.02(c)), and is not appealable. Thus,
the relief sought by Appellants should have been presented by a petition
under§ 1.181 instead of by appeal to this Board. Ex Parte Frye, 94
UPSQ2d 1072, 1077-78 (BPAI 2010) (precedential); see MPEP § 1201 (the
Board will not ordinarily hear a question that is reviewable by petition); In
re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440
F.2d 1395, 1403 (CCPA 1971) (stating that there are many kinds of
decisions made by examiners that are not appealable to the Board when they
are not directly connected with the merits of issues involving rejections of
claims). Accordingly, we do not review the Examiner's objection.
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Application 13/659,323
II. Claims 8-11, 14, 18-22, 26, 28, 29, 37-39, 42--49, and 57-59
stand rejected under 35 U.S.C. § 102(b) as anticipated by
Zetterstrom (US 3,754,576, iss. Aug. 28, 1973).
DISCUSSION
Rejection 1-Enablement
The basis of the Examiner's rejection is that Figures 12 and 13
(depicting the elected species of structure) and their accompanying
disclosure on page 23 of the Specification fail to provide enabling disclosure
for the limitations in the last paragraph of claim 8, and similar limitations in
other independent claims. Final Act. 4.
Appellants contend that the enablement rejection stems from the
Examiner's "mistaken belief that only FIGS. 12 & 13 and the corresponding
written description of those figures can be used to support the claims."
Appeal Br. 16. According to Appellants, "[t]his is clearly incorrect. The
entire written description and all of the drawings are available for enabling a
person skilled in the art to make and use the invention." Id. Appellants
further assert that "a person skilled in the art would clearly understand how
fluid drag acting on the structure 58 ... would cause the structure to rotate in
response to rotational flow in the chamber 50" and "how to stop rotation of
the structure 58 at flow blocking or unblocking positions (for example, using
shoulders or abutments as shown in FIGS. 8-11)." Id. (drawing on the
disclosure directed to Figures 17 and 18 and Figures 8-11 ).
The Examiner disagrees with Appellants' contention that "[ t ]he entire
written description and all of the drawings are available for enabling a
person skilled in the art to make and use the invention." Ans. 6. The
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Application 13/659,323
Examiner suggests that Appellants' reliance on disclosures directed to the
species embodied in Figures 8-11 and 18 is misplaced because the species
of Figures 8-11 and 18 are not elected by Appellants. Id.
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs indicating
that the specification is indeed enabling.
In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993).
Factors to be considered in determining whether a disclosure would
require undue experimentation include ( 1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner's insistence that only those portions of Appellants'
disclosure directed explicitly to Figures 12 and 13 (i.e., the elected species of
structure) may be taken into account when considering the issue of
enablement is not consistent with the law on enablement. See, e.g., Nat'!
Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196
(Fed. Cir. 1999) ("The scope of enablement ... is that which is disclosed in
the specification plus the scope of what would be known to one of ordinary
skill in the art without undue experimentation."). A person of ordinary skill
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Application 13/659,323
in the art would be able to draw on disclosures directed to other
embodiments in determining how to make and use the invention. 3
The Examiner points to details purported to be missing from the
description of the embodiment of Figures 12 and 13, but does not provide
any analysis to show that a person having ordinary skill in the art would
have been unable to make and use the claimed invention without undue
experimentation, such as by analyzing the Wands factors. Thus, the
Examiner has not met the initial burden to establish a reasonable basis to
question the enablement for the claim limitations in question. Accordingly,
we do not sustain the rejection of claims 8-11, 14, 18-22, 26, 28, 29, 37-39,
42--49, and 57-59 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
Re} ection II-Anticipation
In contesting the anticipation rejection, Appellants argue for
patentability of claims 8-11; 18-22; 26; 28; 29; and 57-59 as a first group;
and for patentability of claims 14, 37-39, and 42--49 as a second group.
Appeal Br. 17-19. We select claim 8 as representative of the first group,
and claims 9-11, 18-22, 26, 28, 29, and 57-59 stand or fall with claim 8.
See 37 C.F.R. § 41.37(c)(l)(iv). We address the second group separately.
Claims 8-11, 18-22, 26, 28, 29, and 57-59:
The Examiner finds that Zetterstrom's flap-equipped fluid power
amplifier satisfies all of the limitations of claim 8. Final Act. 5---6 (citing the
3 We emphasize that the enablement requirement of the first paragraph of
35 U.S.C. § 112, first paragraph, is separate and distinct from the description
requirement of that provision. Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (citing Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir. 1991)).
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Application 13/659,323
embodiment of Figs. 3a-3c). The Examiner interprets the "whereby a
resistance to the flow of the fluid composition changes in response to a
change in a ratio of desired to undesired fluid in the fluid composition"
clause of claim 8 as requiring that "the structures [be] capable of changing a
resistance to the flow of the fluid composition in response to a change in the
ratio of desired to undesired fluid in the fluid composition." See id. at 5.
The Examiner explains that Zetterstrom' s system has such capability
because, "[ f]or example, the desired fluid is a low viscous fluid and the
undesired fluid is a high viscous fluid in the fluid composition"; "[a] change
in the ratio of desired to undesired fluid in the fluid composition changes the
overall viscosity of the fluid composition"; and "[t]he resistance to the flow
of the fluid composition changes in response to a change in the overall
viscosity of the fluid composition because the resistance to the flow of a
fluid is a function of the viscosity of that fluid based on the fundamentals of
fluid mechanics." Id.; see Spec. 9:26-10:1 (disclosing that the presence of
undesired fluids, such as water and gas, in an oil producing well decreases
the viscosity of the fluid composition); 10:4--11 (identifying oil, which is a
more viscous fluid, as a desired fluid, and water and gas, which are less
viscous than oil, as undesired fluids).
Appellants argue that Zetterstrom does not anticipate the subject
matter of claim 8 because "[Zetterstrom] does not describe any change in a
ratio of desired to undesired fluid in a fluid composition, and does not
describe resistance to flow changing in response to such a change in the ratio
of desired to undesired fluid." Appeal Br. 17. Appellants submit that "it is
not inherent that a change in a ratio of desired to undesired fluid would be
present in the [Zetterstrom] fluid amplifier" and that, "[i]n contrast, changes
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in ratios of fluids in fluid compositions produced from or injected into
subterranean wells are often encountered." Id. at 17-18. Appellants add
that "the claims do not merely require that a resistance to flow is capable of
changing in response to a change in a ratio of desired to undesired fluids in
the fluid composition." Id. at 18. Appellants insist that "[i]nstead, the
claims require that a structure displaces, whereby a resistance to the flow of
the fluid composition changes in response to a change in a ratio of desired to
undesired fluid in the fluid composition." Id.
Appellants' arguments appear to be premised on a position that
claim 8 requires a fluid composition in which a change in a ratio of desired
to undesired fluid inherently occurs. Such a claim construction is
unreasonably narrow, as claim 8 does not positively recite a fluid
composition, or a means for supplying or generating a fluid composition, as
an element in the system. Claim 8, an apparatus claim, recites "[a] variable
flow resistance system for use with a subterranean well." Appeal Br. 21,
Claims App. In attempting to contrast their invention with that of
Zetterstrom, Appellants submit that "changes in ratios of fluids in fluid
compositions produced from or injected into subterranean wells are often
encountered," but do not assert, much less show, that such changes are an
inherent feature of such fluid compositions. See Appeal Br. 18 (emphasis
added). Consistent with Appellants' Specification, we understand
Appellants' invention to be a system that will change resistance to flow if
(i.e., in the event that) the viscosity (or certain other fluid dynamic property)
of the fluid composition changes due to a change in the ratio of components
(e.g., the ratio of more viscous components to less viscous components) in
the fluid. See Spec. 9:23-10:3. Against this background, Appellants fail to
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Application 13/659,323
persuade us that the Examiner's interpretation of the "whereby a resistance
to the flow of the fluid composition changes in response to a change in a
ratio of desired to undesired fluid in the fluid composition" clause of claim 8
as requiring capability of changing a resistance to the flow of the fluid
composition in response to a change in the ratio of desired to undesired fluid
in the fluid composition is unreasonable in light of the Specification.
Further, to the extent that Appellants' argument asserting claim 8
requires more than a capability of a change in a resistance to flow in
response to a change in a ratio of desired to undesired fluids in the fluid
composition urges us to construe claim 8 as requiring that a change in a ratio
of desired to undesired fluids causes the displacement of the structure, such a
claim construction is unreasonably narrow. Claim 8 recites a first causal
connection between a change in a ratio of desired to undesired fluids in the
fluid composition and a change in a resistance to flow of the fluid
composition, and recites a second causal connection between the proportion
of the fluid composition which flows through the first and second flows and
the structure pivoting. Claim 8 also specifies that by pivoting, the structure
varies the resistance to flow. However, although claim 8 recites "a structure
which displaces in response to the flow of the fluid composition," claim 8
does not recite a causal connection between a change in a ratio of desired to
undesired fluids and the displacement (or pivoting) of the structure.
The Examiner finds, correctly, that Zetterstrom discloses a fluid
switch (control fluids applied to control fluid inlets SJ and s2), "which directs
flow of a fluid composition between at least first (between 1 a and 1 b) and
second flow paths (between 1 band a wall)." Final Act. 5. When the flow
through inlets SJ and s2 is kept equal, the fluid composition flows along the
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first path between flap members 1 a and 1 b, and the flap members remain in
the positions shown in Figure 3a. Zetterstrom, col. 3, 11. 49--53. When the
flow through inlet SJ is greater than the flow through inlet s2, as illustrated in
Figure 3b, the proportion of the fluid composition flowing through the first
and second flow paths changes, such that more of the fluid composition
flows along the second path (between flap member lb and a wall), while a
smaller proportion of the fluid composition flows along the first path
(between flap members 1 a and 1 b ), and flap member 1 b pivots in a
clockwise direction to the position shown in Figure 3b. Id., col. 3, 11. 59--63.
When flow of control fluid in inlet SJ completely ceases and control fluid is
introduced only into inlet s2, the proportion of the fluid composition flowing
through the first and second flow paths changes further, such that all of the
fluid composition flows along the second path (between flap member 1 b and
a wall) and none of the fluid composition flows along the first path (between
flap members 1 a and 1 b ), and flap member 1 b pivots further in the
clockwise direction to the position shown in Figure 3c. Id., col. 4, 11. 4--9.
Further, we agree with the Examiner that the different flow patterns depicted
in Figures 3a-3c of Zetterstrom experience three different flow resistances
through Zetterstrom's system, for the reasons set forth by the Examiner. See
Ans. 8-9 (explaining that the flow through each path shown in Figures 3a-
3c varies due to the different lengths and widths of each flow path).
Accordingly, the transition of flow of the fluid composition from that shown
in Figure 3a to that shown in Figure 3b and further to that shown in Figure
3c of Zetterstrom satisfies the limitation in claim 8 that the "structure pivots,
and thereby varies the resistance to flow, in response to a change in a
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proportion of the fluid composition which flows through the first and second
flow paths."
Appellants contend that "[Zetterstrom] does not describe changing a
resistance to flow [with displacement of a structure], but merely describes
changing a direction of flow." Reply Br. 18. This argument is not
persuasive. As already mentioned, for the reasons explained by the
Examiner on pages 8 and 9 of the Answer, pivoting of flap member 1 b
clockwise from the position shown in Figure 3a, causing increasing
proportions of the fluid composition to flow along the longer second path
and constricting the flow paths past the flap members, increases the
resistance to flow of the fluid composition through the system.
For the above reasons, Appellants fail to apprise us of error in the
rejection of claim 8. Accordingly, we sustain the rejection of claims 8-11,
18-22, 26, 28, 29, and 57-59 under 35 U.S.C. § 102(b) as anticipated by
Zetterstrom.
Claims 14, 37-39, and 42-49:
Claim 14 recites "an airfoil which deflects the flow of the fluid
composition in response to the change in the ratio of desired to undesired
fluid" and claim 37 includes a similar recitation. Appeal Br. 23, 26. Claims
App. Claims 38, 39, and 42--49 depend from claim 37 and, thus, also
incorporate the "airfoil" limitation. Id. at 26-28. The Examiner finds that
Zetterstrom's flap member lb is an airfoil. Ans. 13.
An "airfoil" is an object having a shape and contour specifically
designed to react to flow of fluid around it to provide an aerodynamic force,
such as lift. See Spec. 31: 17-32:5 (describing "a lift produced by the airfoil
90 increas[ing] and eventually [overcoming] the biasing force applied to the
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airfoil, allowing the airfoil to pivot about a connection 92" and disclosing
that "[ t ]he lift produced by the airfoil 90 can ... vary depending on
[properties of the fluid composition, such as] density, viscosity, etc."). We
agree with Appellants that the Examiner has not established that flap lb is an
"airfoil," as that term would be understood by a person of ordinary skill in
the art, in light of the Specification. See Appeal Br. 18, Reply Br. 21.
Accordingly, we do not sustain the rejection of claims 14, 37-39, and 42--49
under 35 U.S.C. § 102(b) as anticipated by Zetterstrom.
DECISION
The Examiner's decision rejecting claims 8-11, 14, 18-22, 26, 28, 29,
37-39, 42--49, and 57-59 under 35 U.S.C. § 112, first paragraph, is
REVERSED.
The Examiner's decision rejecting claims 8-11, 18-22, 26, 28, 29,
and 57-59 under 35 U.S.C. § 102(b) is AFFIRMED.
The Examiner's decision rejecting claims 14, 37-39, and 42--49 under
35 U.S.C. § 102(b) is REVERSED.
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-IN-PART
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