Ex Parte Knox-Holmes et al

Patent Trial and Appeal Board

Mar 10, 2017

12595690 (P.T.A.B. Mar. 10, 2017)

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.
12/595,690 10/13/2009 Brent Knox-Holmes PRS-031080US 5434
(PET-1026US)
64065 7590 03/14/2017
CAMERON INTERNATIONAL CORPORATION
ATTN: PATENT SERVICES, 1333 WEST LOOP SOUTH,
SUITE 1700
HOUSTON, TX 77027
EXAMINER
KEYWORTH, PETER
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
03/14/2017 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):
docket @ mktlaw .u s .com
tthigpen@mktlaw.us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENT KNOX-HOLMES, IAN DURDIN, and
ANDREW DAVID JACKMAN
Appeal 2016-001819
Application 12/595,690
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
N. WHITNEY WILSON, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
1 This Decision includes citations to the following documents: Specification filed
Nov. 18, 2009 (“Spec.”); Final Office Action mailed Sept. 25, 2014 (“Final”);
Advisory Action mailed Jan. 6, 2015 (“Advisory”); Appeal Brief filed Mar. 26,
2015 (“Appeal Br.”); Examiner’s Answer mailed Sept. 17, 2015 (“Ans.”); and
Reply Brief filed Nov. 17, 2015 (“Reply Br.”).
Appeal 2016-001819
Application 12/595,690
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision
finally rejecting claims 1—8, 12—20, 22, 26, 28, 39, and 40 (see Final 2—17).
Appeal Br. i. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a strainer assembly that is useful in a variety of
separation operations, including the straining of sea water for use in offshore oil
and gas exploration and production operations. Spec. 1:3—6.
Claim 39 is illustrative of the claimed invention, and is reproduced below:
39. A strainer system comprising:
a strainer housing having a first end portion and a second end
portion, the housing further comprising an inlet for raw fluid and an
outlet for strained fluid, the outlet being located in the first end
portion of the housing;
a plurality of strainer baskets disposed within the strainer
housing, one of the internal and external surfaces of the strainer basket
being in flow communication with the raw fluid inlet and the other of
the internal and external surfaces of the strainer basket being in flow
communication with the strained fluid outlet;
a backwash collector assembly comprising a backwash conduit
configured to conduct a backwash operation on the plurality of
strainer baskets, wherein the backwash conduit is moveable with
respect to each of the strainer baskets and configured to receive dense
and light materials;
a drive system configured to move one of the backwash
conduits and the strainer baskets relative to the other, wherein the
drive system is in the first end portion of the housing; and
a backwash outlet for backwash fluid, the backwash outlet
disposed in the second end portion of the housing;
wherein the backwash collector assembly is configured to draw fluid
both through the strainer basket from within the strainer basket and
2 Appellants identify the real party in interest as Cameron International
Corporation. Appeal Br. 1.
2
Appeal 2016-001819
Application 12/595,690
from outside the strainer basket across the external surface of the
strainer basket during a backwash operation using the backwash
conduit, the configuration including disposing the opening in the
backwash conduit at a distance of from 0.5 to 10.0 mm from the
external surface of the strainer basket.
Appeal Br. 18—19 (Claims App’x).
The claims stand finally rejected under 35 U.S.C. § 103(a) as follows (see
Final 2—17):
1. claims 39 and 40 over Geisbauer (DE 195 23 463 Al, pub. Jan. 2,
1997 (as translated)) and Drori (US 5,030,347, iss. July 9, 1991);
2. claims 1—8, 22, 26, and 28 over Geisbauer, Drori, and Mathewson (US
2,682,812, iss. July 6, 1954);
3. claims 12—14 over Geisbauer, Drori, Mathewson and Hindman et al.
(US 4,612,116, iss. Sept. 16, 1986 (“Hindman”)); and
4. claims 15—20 over Geisbauer, Drori, Mathewson, Hindman, and
Ringo et al. (US 2,751,034, iss. June 19, 1956 (“Ringo”)).
Appellants’ arguments in support of patentability of all appealed claims are
based on similar limitations in the final “wherein” clauses of claims 1 and 39, the
only independent claims on appeal. See generally, Appeal Br. 7—11. Accordingly,
we focus our discussion on claim 39. The dependent claims will stand or fall with
claims 1 and 39. See 37 C.F.R. § 41.37(c)(l)(iv)(2014).
The Examiner finds Geisbauer discloses a strainer system as recited in claim
39, with the exceptions that Geisbauer does not specify the distance between the
opening of the backwash collector and the external surface of the strainer basket
(see appealed claim 39 (specifying “a distance of from 0.5 to 10.0 mm”)), and does
not describe “the backwash collector assembly [as] configured to draw fluid both
through the strainer basket from within the strainer basket and from outside the
3
Appeal 2016-001819
Application 12/595,690
strainer basket across the external surface of the strainer basket during a backwash
operation using the backwash conduit” (claim 39). Final 2—\.
The Examiner, relying on Drori Figures 2 and 5, and column 3, line 65 to
column 4, line 16, finds Drori discloses a similar strainer system “wherein the
opening [(slot 22) of the backwash collector (engagement member 20)] is placed
such that it can be close or far away from the outer surface of a strainer/filter
surface [(element 18)].” Id. at 4. The Examiner finds Drori discloses that during a
backwash operation, a pressure differential is created across the portion of the
strainer (element 18) that is in communication with the opening (slot 22) of the
backwash collector (engagement member 20) causing fluid (filtered water) within
the strainer (element 18), i.e., the high pressure side, to flow into the backwash
collector (engagement member 20), i.e., the low pressure side, via the opening
therein (slot 22). See Final 5; Advisory 2. The Examiner further finds Drori
discloses that unfiltered water from the interior of filter housing 10, i.e., water on
the outside of the strainer, can be helpful in removing dirt from the strainer
(element 18). See Final 5; Advisory 2. The Examiner finds that although Drori
does not disclose specific distances between the opening (slot 22) and the strainer
(element 18), “Drori recognizes the distance between the two elements is related to
the outflow through the strainer. Thus[,] Drori recognizes that varying the distance
would result in a recognizable result,” e.g., “aiding in cleaning the surface of the
[strainer].” Final 5; see Drori 4:8—16 (“[E]ven if the engagement of the slot 22
with the outer surface of the element 18 is not particularly close, the outflow of
unfiltered water from the interior of the filter housing need not be significant and
can be helpful in removing dirt from the element under the pressure differential to
enter the slot 22. The flow of unfiltered water from the interior of the filter
housing 10 through slot 22 also increases the pressure differential due to the
4
Appeal 2016-001819
Application 12/595,690
venturi effect.”). The Examiner finds the ordinary artisan would have modified the
distance between the opening of the backwash collector and the external surface of
the strainer basket in Geisbauer’s strainer system to within the claimed range as a
matter of routine optimization, so as to achieve the benefit of improved cleaning as
taught by Drori. Id. at 5; see also Advisory 2 (“Drori teaches that the distance can
be modified and one skilled in the art would recognize modifying the distance to
be within the range claimed absent a sufficient showing of unexpected results.”).
The Examiner further finds that modification of the distance between the opening
of the backwash collector and the external surface of the strainer basket in
Geisbauer’s strainer system would have resulted in the backwash collector being
inherently capable of “draw[ing] fluid . . . from outside the strainer basket across
the external surface of the strainer basket during a backwash operation” (appealed
claim 39). Advisory 2 (“It is further noted that depending on the location of the
slot of the strainer module of Drori relative to the exterior surface of the strainer
element, the effect of fluid being drawn across the surface would be inherent.”);
see Drori 4:8—16 supra.
The Examiner’s fact finding and reasoning, as set forth in the Final Office
Action and the Advisory Action, support the Examiner’s finding that Geisbauer, as
modified by Drori, would have resulted in a strainer system wherein the opening in
the backwash conduit was positioned at a distance from the external surface of the
strainer basket, in the same manner described in the Specification. See Spec.
10:19-23; 11:2—3 (explaining that the ability of the backwash collector “to draw
fluid both through the strainer basket from within the strainer basket and from
outside the strainer basket across the external surface of the strainer basket during a
backwash operation” (claim 39) results from positioning “the opening in the
backwash conduit... at a distance from the external surface of the strainer
5
Appeal 2016-001819
Application 12/595,690
basket,” “preferably at a distance of from 0.5 to 10.0 mm from the external surface
of the strainer screen”). Further, the disclosure in Drori relied upon by the
Examiner (see Drori 4:8—16) supports the Examiner’s finding that Drori recognizes
the distance between the opening in the backwash conduit and the external surface
of the strainer is related to the outflow through the strainer and, therefore, one of
ordinary skill in the art at the time of the invention would have achieved the
claimed distance of “from 0.5 to 10.0 mm” as a matter of routine experimentation.
See In re Antonie, 559 F.2d 618, 620 (CCPA 1977); In re Boesch, 617 F.2d 272,
276 (CCPA 1980) (“[Discovery of an optimum value of a result effective variable
... is ordinarily within the skill of the art.”). Therefore, because the Examiner
found the structure of Geisbauer, as modified by Drori, would have been identical
to the strainer system of the invention, it was reasonable for the Examiner to find
that the backwash collector of Geisbauer, as modified by Drori, inherently would
have been capable of “draw[ing] fluid both through the strainer basket from within
the strainer basket and from outside the strainer basket across the external surface
of the strainer basket during a backwash operation,” as recited in claim 39. See In
re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record
explicitly discusses the . . . [limitation], [Appellants’] application itself instructs
that [the limitation] is not an additional requirement imposed by the claims on the
[claimed invention], but rather a property necessarily present in [the claimed
invention].”).
Appellants argue, very generally, that the Examiner reversibly erred in
finding Geisbauer and Drori, alone or in combination, disclose or suggest the
limitations recited in the “wherein” clause of claim 39. Appeal Br. 7—10.
Appellants, however, have not explained, with any degree of specificity, why they
view the Examiner’s fact finding and reasoning as insufficient to support a prima
6
Appeal 2016-001819
Application 12/595,690
facie case of obviousness. See id. Appellants also argue “[t]he claimed ranges
produce a new and unexpected result which is different in kind and not merely in
degree from the results of the prior art” (id. at 10), but do not identify, nor do we
find, any evidence of unexpected results in the appeal record (see, e.g., Spec. 11:2—
3 (merely describing the claimed range of 0.5 to 10.0 mm as being a preferred
range)). Absent such explanation or evidence, we are not persuaded of reversible
error in the Examiner’s conclusion of obviousness. See In re Kahn, 441 F.3d 977,
985—86 (Fed. Cir. 2006) (explaining the burden is on the appellant to demonstrate
error in the Examiner’s position).
Appellants present additional arguments in their Reply Brief, alleging the
Examiner raised a new ground of rejection in finding that Geisbauer, as modified
by Drori, would have resulted in a backwash collector inherently capable of
drawing fluid across the external surface of the strainer. See Reply Br. 2. As
discussed above, the Examiner’s position regarding inherency was clearly stated in
the Advisory Action. See Advisory 2, quoted supra. Accordingly, we decline to
consider these arguments. 37 C.F.R. § 41.41(b)(2)(2014); see also Ex parte
Borden, 93 USPQ2d 1473, 1474 (Bd. Pat. App. & Int. 2010) (Informative) (“The
reply brief is not an opportunity to make arguments that could have been made
during prosecution, but were not. Nor is the reply brief an opportunity to make
arguments that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not.”).
For the above-stated reasons, we are not persuaded of error in the
Examiner’s conclusion of obviousness as to claims 1—8, 12—20, 22, 26, 28, 39, and
40.
7
Appeal 2016-001819
Application 12/595,690
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED
8