Ex Parte Hansen et al

Patent Trial and Appeal Board

Aug 14, 2018

14468003 (P.T.A.B. Aug. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/468,003 08/25/2014 Mitchel D. Hansen
33649 7590 08/14/2018
Mr. Christopher John Rourk
Jackson Walker LLP
2323 ROSS A VENUE
SUITE 600
DALLAS, TX 75201
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.
139099.00011 1012
EXAMINER
DURDEN, RICHARD KYLE
ART UNIT PAPER NUMBER
3753
MAIL DATE DELIVERY MODE
08/14/2018 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 MITCHEL D. HANSEN, ANDREW M. ELDRIDGE,
JOSE I. MOLINA, and JONATHAN C. HISSAM
Appeal2017-011588
Application 14/468,003 1
Technology Center 3700
Before JOSIAH C. COCKS, EDWARD A. BROWN, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner's
decision rejecting claims 1 and 3-21. 2 Final Office Action (Sept. 7, 2016)
(hereinafter "Final Act."). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Summit Casing Services, LLC ("Appellant") is the applicant, as provided
by 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Br.
(June 7, 2017) (hereinafter "Appeal Br."), at 4.
2 Claim 2 is cancelled. Id. at 15 (Claims App.).
Appeal2017-011588
Application 14/468,003
CLAIMED SUBJECT MATTER
Claims 1, 13, and 20 are the independent claims on appeal. Claim 1
illustrates the claimed subject matter, and reads:
1. A check valve comprising:
a valve housing having an input opening and an output
openmg;
a first sealing mechanism disposed in the valve housing,
the first sealing mechanism having a valve head coupled with an
overmold layer;
a second sealing mechanism disposed in the valve
housing, the second sealing mechanism having a seal coupled
with a seal retainer; and
a compression device coupled to the first and second
sealing mechanisms, wherein the compression device is
configured to exert a force on the first and second sealing
mechanisms.
Appeal Br. 15 (Claims App.).
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 13-19 are rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Streich (US 3,957,114, issued May 18, 1976).
2. Claims 1, 3-8, 10-12, 20, and 21 are rejected under 35 U.S.C.
§ 103 as unpatentable over Baldridge (US 4,624,316, issued Nov. 25, 1986)
and Knox (US 3,776,250, issued Dec. 4, 1973).
3. Claim 9 rejected under 35 U.S.C. § 103 as unpatentable over
Baldridge, Knox, and Terry (US 5,328,763, issued July 12, 1994).
4. Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable
over Streich and Terry.
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Application 14/468,003
ANALYSIS
Rejection 1: Anticipation of Claims 13-19
The Examiner finds that Streich discloses all limitations of claim 13,
including a first sealing mechanism having a valve head (plunger head 40)
coupled with an overmold layer ("conical valve surface [ 46] ... carried an
elastomeric covering to provide enhanced sealing") comprising a protruding
lip. Final Act. 2-3 (citing Streich, col. 3, 1. 66-col. 4, 1. 2, Figs. IA, IB), id.
at 3 ( annotated version of Streich' s Fig. 1 B showing location of "lip").
Appellant contends that Streich does not disclose an "overmold layer
with a protruding lip." Appeal Br. 9. According to Appellant, "overmolding
is a process whereby a layer is molded over another layer, as opposed to
merely coating an object with a layer of paint or other similar materials." Id.
at 10.
The Examiner disagrees that Streich fails to disclose an "overmold
layer." Ans. 9-11. The Examiner notes Appellant's Specification states:
Overmold layer 105 can be formed from rubber, elastic polymer,
any other suitable material or a combination of suitable
materials to provide a seal with input opening 102. Overmold
layer 105 can be positioned on valve head 104 using
overmolding, injection molding, wrapping, or any suitable
alternative process.
Id. at 9 (citing Spec. ,r 16 (emphasis added)). In view of this description, the
Examiner determines that a broad, reasonable interpretation of an "overmold
layer" is "a layer of any suitable material or combination of materials to
provide a seal, with examples of rubber and elastic polymer provided,"
which layer "may be applied by any suitable process, with examples of
overmolding, injection molding, and wrapping provided." Id. at 10. The
Examiner finds that Streich discloses an elastomeric material ( covering)
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Application 14/468,003
forming an overmold layer, that is, "a layer of a suitable material to provide
a seal." Id. The Examiner notes that claim 13 does not specify the method
of producing the overmold layer, and states that any successful method used
could be considered a "suitable alternative process." Id.
Appellant replies that "[a]n overmold layer 605 coupled with the
valve head 604 is significantly more than the valve surface 46 of the plunger
head 40 carrying an elastomeric covering. Covering without more only
suggests something that coats the surface and not an overmold layer 605 that
can be coupled thereto." Reply Br. 3.
We understand that Appellant is referring to valve head 604 and
overmold layer 605 shown in Figure 6 of the application, and to the valve
structure shown in Figure lB of Streich. However, we agree with the
Examiner that Streich discloses "a valve head coupled with an overmold
layer," as claimed. Consistent with the Specification, claim 13 does not
require the "overmold layer" to be positioned on the valve head by an
"overmolding" process, but rather, this can be done by "any suitable
alternative process." See Spec. ,r,r 16, 25. Regarding Appellant's contention
that "[ c ]overing without more only suggests something that coats the surface
and not an overmold layer 605 that can be coupled thereto" (Reply Br. 3),
Streich does not describe that the elastomeric covering merely "coats the
surface." In fact, we note that Baldrige discloses that Streich (i.e., US
3,957,114) is a typical example of a type of valve "where the valve body
head contains an elastomeric seal adhesively retained thereon." See
Baldridge, col. 1, 11. 17-25. We agree with the Examiner that Streich's
description, "[t]he conical valve surface 46 preferably carried an
elastomeric covering to provide enhanced sealing engagement between the
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Application 14/468,003
plunger head 40 and the valve seat 48," can reasonably be considered a
disclosure of "a valve head coupled with an overmold layer," as claimed.
See Streich, col. 3, 1. 66-col. 4, 1. 2 ( emphasis added), Figs. IA, IB.
However, claim 13 requires an "overmold layer further comprising a
protruding lip." Appeal Br. 16 (Claims App. (emphasis added)). Appellant
contends that the elastomeric covering of Streich does not protrude from
plunger head 40, but instead "conforms to the surface of plunger head 40 to
the point where it is not even shown in the figures of Streich as a separate
structural component" (Appeal Br. 9 (see reproduced portion of Figure IA
of Streich)), and that the elastomeric covering does not extend from conical
valve surface 46 (id. at 10).
In response, the Examiner submits that, although Streich does not
show any cross section through the valve head, "this does not appear to be
evidence that the valve head shown neglects the elastomeric layer." Ans. 11.
To the contrary, the Examiner submits, "one of ordinary skill in the art
would recognize that the elastomeric layer is shown but is not detailed in
cross section in the figures." Id. In support, the Examiner points out that
Streich describes Knox in the discussion of the prior art as being assigned to
the same assignee. Ans. 11 (citing Streich, col. 2, 11. 1-10). The Examiner
finds that Knox discloses "a check valve comprising a valve head with a
very similar shape which is shown in cross section and discloses protruding
lips formed by an elastomeric covering" (id.) and that Knox "uses similar
language to describe the elastomeric covering" (id. ( citing Knox, col. 2, 11.
61-64)). The Examiner acknowledges that Streich does not explicitly
disclose which portions of the valve head are formed from the overmold
layer, but submits that "the elastomeric coating would at least coat the
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portions of the conical surface in contact with the valve seat as disclosed,
including the protruding lip shown in figures IA & IB." Id.
We agree with Appellant that the Examiner has not established that
Streich discloses an "overmold layer further comprising a protruding lip," as
recited in claim 13. This limitation requires that the overmold layer, itself,
comprise a protruding lip. Streich does appear to show a "lip" provided on
plunger head 40 in Figures IA and IB, however, Streich does not describe or
illustrate that it is an elastomeric covering carried by the conical valve
surface 46 that comprises such a protruding lip.
We are mindful that "[a] prior art reference may anticipate without
disclosing a feature of the claimed invention if that missing characteristic is
necessarily present, or inherent, in the single anticipating reference."
Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37
(Fed. Cir. 2010) (emphasis added). Here, however, the Examiner's attempt
to infer there is commonality between Knox's disclosure and that of Streich
(Ans. 11 ), does not clear the hurdle of establishing that Streich' s elastomeric
covering is necessarily formed with the same characteristics as that of Knox.
To that end, there is insufficient basis on the record before us to conclude
that Streich's elastomeric covering carried by the conical valve surface 46 is
the same as the elastomeric covering 18 disclosed in Knox. See Knox, col.
2, 11. 61-64, Fig. I. Further, to the extent the Examiner is relying on Knox to
show that the claimed overmold layer comprising a protruding lip is known
in the art, the Examiner does not explain why it would have been obvious to
utilize Knox's elastomeric covering comprising a protruding lip as the
elastomeric covering in Streich's valve assembly.
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As the Examiner has not established by a preponderance of the
evidence that Streich discloses all limitations recited in claim 13, we do not
sustain the rejection of claim 13, or of claims 14--19 depending therefrom, as
anticipated by Streich.
Rejection 2: Unpatentability of Claims 1, 3---8, 10---12, 20, and 21
Appellant argues claims 1, 3-8, 10-12, and 21 as a group. Appeal Br.
10-13. Appellant also separately argues claim 20. Id. at 13-14.
We select claim 1 as the representative claim of the group, and address the
argument for claim 20 separately. Claims 3-8, 10-12, and 21 stand or fall
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 1. 3-8. 10---12. and 21
As for claim 1, the Examiner finds that Baldridge discloses a check
valve (valve assembly 10) comprising, inter alia, a first sealing mechanism
disposed in a valve housing (valve body housing 12) and having a valve
head (valve body head 66). Final Act. 5 (citing Baldrige, Fig. 1). The
Examiner finds that Baldrige does not disclose an overmold layer coupled to
the valve head. Id.
The Examiner finds that Knox teaches a check valve comprising a
first sealing member having a valve head (plunger head 13) coupled to an
overmold layer ( elastomeric covering 18). Id. ( citing Knox, Figs. 4--5, col.
2, 11. 58---63). The Examiner determines that it would have been obvious to
modify the first sealing mechanism of Baldridge to include an overmold
layer coupled to the valve head, as taught by Knox, to provide better sealing
engagement between the valve head and valve seat. Id. ( citing Knox, col. 2,
11. 60---63).
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Application 14/468,003
Appellant contends that the Examiner's proposed combination does
not disclose each claim element. Appeal Br. 10. Appellant's contention that
Baldridge does not use the term "overmold" or its cognate terms (id.) is not
persuasive, as the Examiner relies on Knox, not Baldridge, for disclosing an
"overmold layer."
Appellant also contends that Baldrige teaches away from the
Examiner's proposed combination. Appellant quotes the following
description in Baldrige pertaining to prior art valve assemblies:
However, these prior art valve assemblies have limitations
in use. For instance, where the elastomeric seal is retained in an
annular recess on the valve body head of the poppet type valve,
high velocity well fluids washing over the valve body head tend
to wash the elastomeric seal from the annular recess. In other
instances, where the valve body head contains an elastomeric
seal adhesively retained thereon, in deep, hot wells where oil
based muds are used, the adhesive loses strength thereby
allowing the elastomeric seal to wash off the valve body head.
Appeal Br. 10 (quoting Baldridge, col. 1, 11. 26-36). Appellant contends that
"Baldrige teaches away from combinations with elastomeric seals in any
environment, because all well fluids are high velocity well fluids for an
application where the elastomeric seal is retained in an annular recess on
the valve body head of the poppet type valve." Id. ( emphasis added).
The Examiner disagrees that Baldwin teaches away. Ans. 12. The
Examiner notes that the above-quoted passage in Baldridge describes two
distinct forms of prior art seals. Id. Baldridge describes, "[a]nother type of
prior art valve assembly used in well cementing equipment has a poppet type
valve used therein where the valve body head contains an elastomeric seal
adhesively retained thereon to sealingly engage the valve body housing."
Baldridge, col. 1, 11. 17-21 ( emphasis added). The Examiner also notes that
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Application 14/468,003
Baldridge mentions US 3,776,250 (i.e., Knox) as an example of this type of
valve assembly. Ans. 12 (citing Baldridge, col. 1, 11. 17-25). As quoted
above, Baldridge discloses that, for this type of valve, "in deep, hot wells
where oil based muds are used, the adhesive loses strength thereby allowing
the elastomeric seal to wash off the valve body head." Baldridge, col. 1, 11.
31-36 ( emphasis added).
The Examiner determines that the description in Baldridge regarding
"high velocity well fluids" is not directed to the types of seals in Knox
where the seal is adhesively retained. Ans. 13. The Examiner explains that
Knox's valve does not comprise the elastomeric seal retained in an annular
recess. Id. at 14. Rather, the Examiner finds, the description in Baldridge
regarding the use of valves "in deep, hot wells with oil-based muds" is
directed to the type of seals used in Knox. Id. The Examiner determines
that this description in Baldridge does not constitute a general teaching away
because "the combination of Baldridge and Knox may still be desirable in
applications wherein the limitations disclosed by Baldridge do not exist, for
example, in a shallow, cool well environment with water based muds." Id.
at 13. The Examiner adds that "[a] known or obvious combination does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use." Id. (citing In re Gurley, 27
F.3d 551, 554 (Fed. Cir. 1994)). The Examiner also disagrees that "all well
fluids are high velocity well fluids." Id.
We are not persuaded by Appellant that Baldrige teaches away from
the proposed combination. Although Baldridge describes a limitation of a
valve assembly containing an elastomeric seal adhesively retained on the
valve body head with regard to a specific environment (i.e., "deep, hot wells
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Application 14/468,003
where oil based muds are used"), Knox also teaches the benefit that
"[ e ]lastomeric covering 18 sufficiently encases plunger head to provide
better sealing engagement between head 13 and valve seat 17." Knox, col.
2, 11. 61---64 (emphasis added). Knox also describes:
Hydrostatic pressure now being higher in the annulus than in the
casing, cement will attempt to flow back into the casing through
the valve but will act on the backside of plunger head 13 and in
conjunction with lip 42 on the lower periphery of elastomeric
covering 18 to form a tighter better seal of the valve assembly by
forcing plunger head 13 tighter into seat 17 and by further acting
upward against the back side of lip 42 forcing it into sealing
arrangement with the lower part 43 of seat 17.
See Knox, col. 4, 11. 43-52 (emphasis added). Accordingly, Knox teaches
benefits provided by the improved sealing associated with using elastomeric
covering 18 on plunger head 13. A combination of prior art references may
simultaneously have advantages and disadvantages, and the benefits, both
lost and gained, are to be weighed against each other. See Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); Winner Int'! Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). As the Examiner
identifies benefits taught by Knox for modifying the valve assembly of
Baldridge, which Appellant does not persuasively refute, we are not
persuaded that Baldridge teaches away from the proposed modification.
Lastly, Appellant acknowledges that Knox teaches a plunger head 13
having an elastomeric coating, but contends that Knox does not disclose an
overmold layer. Appeal Br. 11. The Examiner disagrees for reasons similar
to those discussed with regard to Streich. Ans. 14--16. For reasons similar
to those discussed with respect to claim 13, we agree with the Examiner that
Knox's elastomeric covering 18 encasing plunger head 13 discloses "a valve
head coupled with an overmold layer" as recited in claim 1.
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Application 14/468,003
For the above reasons, we sustain the rejection of claim 1 as
unpatentable over Baldridge and Knox. Appellant does not argue claims 3-
8, 1 0-12, and 21 apart from claim 1. We discern no error in the Examiner's
rejection of claims 3-8, 10-12, and 21, and also sustain the rejection of
those claims.
Claim 20
Claim 20 calls for "a first sealing mechanism disposed in the valve
housing, the first sealing mechanism having a valve head coupled with an
overmold layer wherein the overmold layer further comprises a protruding
lip configured to interface with the valve housing." Appeal Br. 17
( emphasis added). The Examiner finds that Baldridge does not disclose that
valve head 66 is "coupled with an overmold layer wherein the overmold
layer further comprises a protruding lip configured to interface with the
valve housing." Final Act. 9.
The Examiner relies on Knox to teach a valve head (plunger head 13)
coupled to an overmold layer ( elastomeric covering 18) having a protruding
lip 42 configured to interface with the valve housing. Id. at 9-10 (citing
Knox, Figs. 4--5, col. 2, 11. 58-63). The Examiner reasons that it would have
been obvious to modify Baldridge in view of Knox to include an overmold
layer coupled to the valve head, wherein the overmold layer comprises a
protruding lip, "as the protruding lip allows the overmold layer to form a
better seal against the valve seat." Id. (citing Knox, col. 4, 11. 43-52).
Appellant contends that Baldridge teaches away from the Examiner's
proposed combination for the reasons discussed above with respect to claim
1. Appeal Br. 10. As discussed above, this contention is not persuasive.
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Appellant also contends that the Examiner "acknowledges that the lip
42 of the elastomeric coating of Knox is missing from Baldridge." Id. at 14.
This contention does not address the rejection as stated, as the Examiner
acknowledges that Baldridge does not disclose the claimed overmold layer
and relies on Knox to teach this features. Accordingly, this contention does
not apprise us of any error, and we also sustain the rejection of claim 20 as
unpatentable over Baldridge and Knox.
Rejection 3: Unpatentability of Claim 9
Appellant presents no argument against the rejection of claim 9,
which depends from claim 1. Hence, we sustain the rejection of claim 9 as
unpatentable over Baldridge, Knox, and Terry for the same reasons as for
claim 1.
Rejection 4: Unpatentability of Claim 16
Claim 16 depends indirectly from claim 13. The Examiner's reliance
on Terry to alternatively reject claim 16 as unpatentable over Streich and
Terry does not cure the deficiencies in the rejection of claim 13 discussed
above. Final Act. 8-9. Hence, we do not sustain the rejection of claim 16.
DECISION
We affirm the rejections of claims 1, 3-12, 20, and 21, and reverse the
rejections of claims 13-19.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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