Ex Parte Grace et al

Patent Trial and Appeal Board

Aug 31, 2016

13602302 (P.T.A.B. Aug. 31, 2016)

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.
13/602,302 09/03/2012 Andrew Grace SUR031022CON1(CMRN0002-1) 1048
64833 7590 08/31/2016
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
JELLETT, MATTHEW WILLIAM
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
08/31/2016 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 ANDREW GRACE, GREGORY GREENE, and
EDMUND MCHUGH
____________

Appeal 2014-0095381
Application 13/602,3022
Technology Center 3700
____________

Before PHILIP J. HOFFMANN, JAMES A. WORTH, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 30–49. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b).
We AFFIRM-IN-PART.

1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Apr. 24, 2014) and Reply Brief (“Reply Br.,” filed Sept. 2, 2014), and the
Examiner’s Final Office Action (“Final Act.,” mailed Dec. 24, 2013) and
Answer (“Ans.,” mailed June 30, 2014).
2 According to Appellants, the real party in interest is Cameron International
Corporation (Appeal Br. 2).
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Introduction
Appellants’ disclosure relates to “maintain[ing] a well and/or
enhanc[ing] throughput of a well . . . to extend the life of a well or increase
the rate at which resources are extracted from a well.” (Spec. ¶ 4).
Claims 30, 41, and 49 are the independent claims on appeal. Claim
30, reproduced below, is illustrative of the subject matter on appeal:
30. A system, comprising:
a chemical-injection management unit configured
to regulate a fluid flow of a chemical into a wellhead, wherein
the chemical-injection management unit comprises:
a housing having an interior;
a first interface coupled to the housing, wherein
the first interface comprises a mechanical connector, a power
connector, and at least one fluid connector;
a chemical injection control assembly disposed
within the interior of the housing, wherein the chemical
injection control assembly is configured to control a parameter
of fluid flow through a fluid path and the chemical injection
control assembly comprises a valve; and
a protective fluid disposed within the interior of
the housing; and
a pressure equalizer coupled to the housing,
wherein the pressure equalizer is disposed between the
protective fluid and an exterior of the chemical-injection
management unit.

(Appeal Br., Claims App.)

Rejections on Appeal
The Examiner maintains, and the Appellants appeal, the following
rejections:
I. Claims 30–33 and 36–39 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shaw
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(US 7,234,524 B2, iss. June 26, 2007) and Cairns
(US 5,194,012, iss. Mar. 16, 1993).
II. Claims 34 and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shaw, Cairns, and Mahawili
(US 4,315,523, iss. Feb. 16, 1982).
III. Claims 40 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shaw, Cairns, and Deans
(US 2004/0262008 A1, pub. Dec. 30, 2004).
IV. Claims 41, 44, 45, and 47 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Shaw and Deans and/or
Fenton (US 2002/0070026 A1, pub. June 13, 2002).
V. Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shaw and Deans and/or Fenton,
and further in view of Cairns.
VI. Claim 46 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shaw and Deans and/or Fenton, and
further in view of Mahawili.
VII. Claim 49 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shaw and Mahawili.

ANALYSIS
Rejection I
Independent claim 30 and dependent claims 31–33 and 36–39
We are persuaded by Appellants’ argument that Shaw does not teach a
valve disposed within the interior of the housing, as recited in independent
claim 30, i.e.,
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a chemical injection control assembly disposed within the
interior of the housing, wherein the chemical injection control
assembly is configured to control a parameter of fluid flow
through a fluid path and the chemical injection control
assembly comprises a valve ... [and] a protective fluid disposed
within the interior of the housing.
(Appeal Br. 8–9). In particular, Appellants assert that Shaw does not
disclose a valve disposed within a housing of the chemical injection unit 150
along with the other claimed components (id. at 9). The Examiner relies on
the disclosure in column 3, lines 34–37, and on Figure 2, of Shaw for the
teaching of a valve with a pump within the housing of unit 150 (Ans. 16).
However, as the Examiner concedes, the housing of unit 150 is not shown in
Figure 2, and in any event, the disclosure of column 3, lines 34–37 states
that the valve is within line 140. The Examiner does not provide evidence or
reasoning to support the finding that the valve within line 140 is also within
the housing of unit 150. For example, Figure 1 depicts (at least a portion of)
line 140 outside of the housing of unit 150. The Examiner relies on Cairns
for the teaching of a protective fluid but does not rely on Cairns to remedy
the argued deficiency in Shaw, i.e., that Shaw fails to teach a valve within a
common housing.
Therefore, we do not sustain the Examiner’s rejection under § 103 of
independent claim 30 over Shaw and Cairns. For the same reason, we do
not sustain the Examiner’s rejection under § 103 of claims 31–33 and 36–39,
which depend therefrom.

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Rejection II
Dependent claims 34 and 35
Claims 34 and 35 depend from claim 30, and stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Shaw, Cairns, and Mahawili.
The Examiner relies on Mahawili (column 6, line 17) for the teaching of a
positive displacement flow meter with needle valve 33 (Final Act. 13). We
have reviewed the portions of Mahawili relied on by the Examiner and it is
unclear at best whether needle valve 33 is within the interior of the housing,
as claimed (e.g., the housing of chamber 12 of Mahawili). As such,
Mahawili does not remedy the deficiency in the Examiner’s rejection under
§ 103 of claim 30 over Shaw and Cairns. Therefore, we do not sustain the
Examiner’s rejection under § 103 of dependent claims 34 and 35 over Shaw,
Cairns, and Mahawili.

Rejection III
Dependent claim 40
Claim 40 depends from claim 30, and stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shaw, Cairns, and Deans. The
Examiner does not rely on Deans to remedy the deficiency in the Examiner’s
rejection under 35 U.S.C. § 103(a) of independent claim 30 over Shaw and
Cairns. Therefore, we do not sustain the Examiner’s rejection under § 103
of claim 40 over Shaw, Cairns, and Deans, for similar reasons as for
independent claim 30.

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Rejection VII
Independent claim 49
Independent claim 49 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Shaw and Mahawili, and contains similar
language and requirements as independent claim 30. We do not
sustain the Examiner’s rejection under § 103 of independent claim 49
over Shaw and Mahawili, for similar reasons as for claims 34 and 35.

Rejection IV
Independent claim 41 and dependent claims 45 and 47
Appellants argue the patentability of claims 41, 45, and 47 together.
We select independent claim 41 as representative, such that claims 45 and 47
stand or fall with independent claim 41. See 37 C.F.R. § 41.37(c)(1)(iv).
We are unpersuaded by Appellants’ argument that Shaw, Deans, and
Fenton fail to disclose a tree interface configured to mount the housing, as
recited by independent claim 41, i.e., “a housing having an interior [and] a
tree interface coupled to the housing, wherein the tree interface is configured
to mount the housing to a tree of the wellhead” (Appeal Br. 13–15).
Appellants concede that Shaw discloses a chemical injection housing and
that “Fenton generically discloses a tree 31, which is coupled to a wellhead
housing 15 by a wellhead connector 35,” but Appellants argue that there is
no “objective evidence” in the form of a teaching, suggestion, or motivation
for one of ordinary skill to have combined the teachings of Fenton with
Shaw to mount a housing of Shaw’s chemical injection management unit
(Appeal Br. 14; see also Reply Br. 3).
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However, we agree with the Examiner that it would have been
obvious to a person of ordinary skill to have mounted the chemical injection
unit of Shaw, as taught in Fenton, so that injection of fluids into and/or out
of the well may be adequately controlled for the purposes of extracting oil
from the well (see Final Act. 16 (citing Fenton ¶ 13)). We, therefore, sustain
the Examiner’s rejection under § 103 of claims 41, 45, and 47 over Shaw
and Deans and/or Fenton.
Dependent claim 48
Although the Office Action Summary (Final Act. 1) lists claim 48 as
rejected, neither the Final Action nor the Answer address the limitations of
claim 48 separately or in conjunction with independent claim 41, from
which claim 48 depends. Accordingly, we determine that the Examiner
failed to establish a prima facie rejection as to claim 48, and thus, we do not
sustain the rejection of that claim.
Dependent claim 44
We are persuaded by Appellants’ argument that Shaw, Deans, and
Fenton fail to disclose the tree interface recited by dependent claim 44, i.e.,
“wherein the tree interface comprises a mechanical connector, a power
connector, and at least one fluid connector” (Appeal Br. 15). In particular,
Appellants assert that the connectors in Shaw relied on by the Examiner, i.e.,
hydraulic lines 140h, tubes 140c, and power/data transmission lines 140b
and 140d do not appear to be part of the tree interface (id.). Shaw discloses
that the hydraulic lines 140h, the tubes 140c, and power transmission lines
140b and 140d are, in one embodiment, all part of line 140 (see col. 5,
ll. 43–47).
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The Examiner appears to rely on a principle of inherency, i.e., that
physical connections are necessarily present in order for the recited
components to function (Ans. 20). However, the Examiner’s reasoning (for
inherency) does not address Appellants’ concern that the connectors are
required to be part of the interface that mounts the housing to the tree, as
recited. The Examiner does not rely on Deans or Fenton to remedy the
argued deficiency in Shaw.
Therefore, we do not sustain the Examiner’s rejection of claim 44.

Rejections V–VI
Dependent claims 42, 43, and 46
Claims 42, 43, and 46 depend from claim 41, and stand rejected under
35 U.S.C. § 103(a) over Shaw and Deans and/or Fenton, and further in view
of one of Mahawili and Cairns. Appellants argue that Mahawili and Cairns
do not remedy the argued deficiency in the Examiner’s rejection under 35
U.S.C. § 103(a) of independent claim 41 over Shaw and Deans and/or
Fenton (Appeal Br. 14, 17). Having found no deficiency therein, we sustain
the Examiner’s rejection of claims 42, 43, and 46.

DECISION
The Examiner’s decision to reject claims 41–43 and 45–47 is
affirmed.
The Examiner’s decision to reject claims 30–40, 44, 48, and 49 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)(1)(iv).
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AFFIRMED-IN-PART