Ex Parte Joseph et al

Patent Trial and Appeal Board

Mar 18, 2016

12642130 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/642,130 12/18/2009 Paul Joseph
44639 7590 03/22/2016
CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED
20 Church Street
22nd Floor
Hartford, CT 06103
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.
ICN4-49272-US
(BA00380US)
CONFIRMATION NO.
1929
EXAMINER
SHANSKE, JASON D
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
03/22/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL JOSEPH, STEVE BOGARD, and
LUIS E. MENDEZ
Appeal2014-000602
Application 12/642,130
Technology Center 3700
Before: CHARLES N. GREENHUT, JILL D. HILL, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20 and 22. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Examiner's correction to the Claims Appendix (Ans. 2) is
acknowledged.
Appeal2014-000602
Application 12/642,130
The claims are directed to an actuator and method of actuating. Claim
1, reproduced below, is illustrative of the claimed subject matter:
An actuator comprising:
a housing;
an expandable member housed within the housing
configured to expand and contract;
an elongated member in operable communication with the
expandable member; and
a ratchet in operable communication with at least one of
the expandable member and the elongated member being
configured to allow movement of the elongated member in a first
direction relative to the housing in response to expansion of the
expandable member and to prevent movement of the elongated
member in a second direction in response to contraction of the
expandable member until the elongated member has moved a
selected dimension, the ratchet automatically permits movement
of the elongated member in the second direction in response to
the elongated member having moved the selected dimension.
REJECTIONS2
Claims 1-10 and 13-20 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Deaton (US 2002/0023759 Al, pub. Feb. 28, 2002).
Claims 11, 12, and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Deaton.
OPINION
The Examiner's initial finding of anticipation is premised on the
finding that "it is inherent that the heat energy to the holding actuator (114)
is removed upon an incremental movement of the elongated member ( 118)
2 The Examiner withdrew the rejections of now-cancelled claim 21. Ans. 2.
2
Appeal2014-000602
Application 12/642,130
beyond the distance required for the elongated member ( 118) to fully open
the flapper valve (24)." Ans. 5. As acknowledged by the Examiner, Deaton
does not expressly discuss what happens to holding actuator 114 when flow
tube 118 has moved downwardly sufficiently to open flapper valve 24. See
Deaton 3--4, paras. 36--40 (discussing Figs. 7-8). However, Deaton's
flapper valve 24 is normally held open to allow fluid flow into the bore.
Reply Br. 2 (citing Deaton 1, para. 18). This purpose would be defeated by
the Examiner's suggested operation of deenergizing actuator 114 once the
valve is open. Deaton depicts the energy to holding actuator 704 as the only
active energy to maintain the valve in an open position. Deaton 5, para. 51;
Fig. 9. Accordingly, we can see no basis in fact or logic to support the
Examiner's finding of inherency.
In the Examiner's Answer, the Examiner sets forth an alternate theory
of anticipation:
if the disclosure of Deaton was construed as being vague as to
the movement of the elongated member in a second direction
being automatic, a person of ordinary skill in the art would have
immediately recognized this as a genus with only two species.
Either the movement of the elongated member in the second
direction would be automatic or not, and in practicing Deaton' s
invention, one would necessarily need to select one or the other.
Given only two options of a required choice, a person of ordinary
skill in the art would immediately see both, and thus both would
be fairly taught and therefore anticipated.
Ans. 6 (citing MPEP § 2131.02). It is true that a generic disclosure may be
anticipatory if one skilled in the art could "at once envisage" the specific
arrangement claimed. Ans. 6-7. However, that inquiry is based on what
one skilled in the art would understand based on the prior art disclosure.
Here, the Examiner has effectively defined the scope of so-called "options"
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Appeal2014-000602
Application 12/642,130
in Deaton from which the skilled artisan has to choose as either including or
not including Appellants' claimed invention. We are not apprised of any
reason why one skilled in the art would envisage the Examiner's "options"
based on Deaton's disclosure. The only reason the Examiner appears to
identify these as "options" appears to be to address Appellants' claimed
subject matter. The Examiner does not point to sufficient evidence or
provide sufficient technical reasoning to support the determination that one
skilled in the art would at once envisage allowing, automatically (claims 1
and 20) or not (claim 13), movement in a second direction in response to
Deaton' s actuator having moved a selected dimension in the first direction.
Reply Br. 2-3.
Accordingly, we reverse the rejection under§ 102 and the rejection
under § 103, which relies on the same unsupported factual findings.
DECISION
The Examiner's rejections are reversed.
REVERSED
4