Ex Parte McCann

Patent Trial and Appeal Board

Jun 18, 2013

11789738 (P.T.A.B. Jun. 18, 2013)

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.
11/789,738 04/24/2007 Edward D. McCann 2242.010 9899
30589 7590 06/19/2013
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
EXAMINER
STEPHENSON, DANIEL P
ART UNIT PAPER NUMBER
3676
MAIL DATE DELIVERY MODE
06/19/2013 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 EDWARD D. MCCANN
____________________

Appeal 2011-006213
Application 11/789,738
Technology Center 3600
____________________

Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006213
Application 11/789,738

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1, 2, 5, 6, 13, 14, 17, 18, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1, 13, and 21 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for depositing a lost circulation material into a
drilling fluid holding tank, comprising:
transporting a quantity of lost circulation material in bulk
to a well drilling site;
storing the quantity of lost circulation material in a
storage assembly in bulk at the well drilling site; and
transporting a selected quantity of the lost circulation
material from the storage assembly into the drilling fluid
holding tank by:
providing a pump assembly having an intake hose
and an exhaust hose;
positioning a distal end of the intake hose in
proximity to the quantity of lost circulation material;
positioning a distal end of the exhaust hose in
proximity to the drilling fluid holding tank;
activating the pump assembly such that the lost
circulation material is drawn into the intake hose and
discharged from the exhaust hose into the drilling fluid holding
tank; and
discharging a volume of aerosolized fluid near the
distal end of the exhaust hose.

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Application 11/789,738

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REJECTIONS
1. Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cox (US 3,568,782; iss. Mar. 9, 1971), Van Abbema (US
4,580,928; iss. Apr. 8, 1986), and Gourdine (US 3,757,491; iss. Sep. 11,
1973); and
2. Claims 13, 14, 17, 18, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cox, Van Abbema, Gourdine, and
Cremeans (US 6,630,429 B1; iss. Oct. 7, 2003).

OPINION
Claims 1, 2, 5, and 6 – Cox/Van Abbema/Gourdine
The Examiner finds that Cox discloses each of the features of claim 1
except using a pump for transporting the lost circulation material and
discharging fluid at the exhaust hose. Ans. 3-4. The Examiner finds that
Van Abbema discloses a pump transporting lost circulation material and
reasons that it would have been obvious to use a pump in Cox as “a simple
matter of operational engineering decision.” Ans. 4. The Examiner
additionally finds that Gourdine discloses use of a fluid for dust suppression
and reasons that it would have been obvious to use a fluid in Cox “as a
safety measure to prevent dust buildup.” Id.
Appellant contends that modifying Cox to include a pump would
require a substantial reconstruction and redesign of the elements in Cox and
that it would also change the principle under which Cox was designed to
operate. Br. 7. The modification proposed by the Examiner simply includes
the use of a pump instead of a conveyor in Cox. See Ans. 4. This does not
appear to require a substantial redesign or to change the principle of
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operation in Cox; it is merely changing the manner of conveyance from one
known method to another. Appellant offers no explanation as to why a
substantial redesign would be required or why the principle of operation
would be changed. See Br. 7. Thus, we are not apprised of Examiner error.
Appellant argues that including a pump instead of a conveyor would
render Cox unsatisfactory for its intended purpose because the proposed
modification would eliminate the flattening of popcorn which occurs on the
conveyor in Cox. Br. 7-8. This argument is not persuasive because Cox
does not require the flattening operation. See Cox, col. 1, ll. 47-49 (“In
certain instances, it may be desirable to flatten the popped cereal grain prior
to pumping the same down the wellbore.”).
With regard to the addition of fluid use for dust suppression,
Appellant argues that there is no suggestion in the references themselves to
include fluid for dust suppression in Cox. Br. 10. This argument also does
not apprise us of Examiner error because there is no requirement that the
references themselves provide the suggestion for the proposed modification.
See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (“The
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents.”).
Appellant also contends that Cox would already include a fluid system
if a safety concern existed due to dust buildup. Br. 10. This general
allegation does not apprise us of Examiner error. Appellant additionally
explains that Cox already has a mechanism to suppress dust because the
flattened popcorn in Cox is discharged to a mud tank including liquid
drilling mud. Br. 10-11. This explanation does not apprise us of Examiner
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error because it does not explain why dust suppression would not be
beneficial at the location between the pump discharge and the mud tank in
the proposed modified Cox (i.e., before the pumped lost circulation material
is fully mixed with the liquid drilling mud).
Appellant further argues that Cox does not disclose transporting the
lost circulation material “in bulk” to the drilling site and storing the lost
circulation material “in bulk” at the drilling site as required by claim 1. Br.
11-12. Appellant argues that the term “bulk” means “without bags.” See Br.
12. Appellant explains that “the Cox reference is silent as to the form that
the unpopped cereal grains are shipped to, and stored at the drilling site” and
“provides no teaching that the unpopped cereal grains are transported to the
drilling site ‘in bulk’ so as to overcome the problems discussed in
paragraphs [0009]-[0014] of the instant disclosure, e.g., problems associated
with the use of bags of loss circulation material.” Id.
Appellant does not contend that any special definition for the term
“bulk” exists in the art and we are not aware of any special definition
provided in Appellant’s Specification. The plain meaning of “bulk” is “a
large quantity.” CHAMBERS 21ST CENTURY DICTIONARY (2001) (retrieved
from http://www.credoreference.com/entry/chambdict/bulk) (last accessed
June 14, 2013). Appellant has failed to persuasively explain why Cox does
not disclose transportation and storage of a large quantity of cereal grains.
Thus, we are not apprised of Examiner error.
For the reasons set forth above, we sustain the Examiner’s rejection of
claim 1. Claims 2, 5, and 6 depend from claim 1 and are not argued
separately. See Br. 6-13. These claims fall with claim 1.

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Application 11/789,738

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Claims 13, 14, 17, 18, 21, and 22 – Cox/Van Abbema/Gourdine/Cremeans
The rejection of claims 13 and 21 is similar to the rejection of claim 1.
Ans. 4-5. However, claims 13 and 21 additionally recite that the material
used is cottonseed hulls. The Examiner finds that Cremeans discloses use of
cottonseed hulls and reasons that it would have been obvious to further
modify Cox accordingly as “a simple matter of design choice.” Ans. 5.
Appellant reiterates the unpersuasive arguments presented regarding
claim 1. Br. 13. Appellant further argues that the Examiner’s proposed
modification would render the system of Cox unusable for its intended
purpose because the material in Cremeans is heat resistant and would not
“pop” when heated. Br. 14-16. However, this does not explain why the
system of Cox would be unusable for its intended purpose. It appears that
the heating operation in Cox would simply not have any effect on the
cottonseed hulls. Appellant does not explain why the proposed modified
system of Cox could not still store and transport the cottonseed hulls to the
drilling fluid holding tank.
Appellant additionally argues that Cremeans teaches away from
discharging lost circulation material into a mud tank. Br. 14. Appellant
explains that the timing of the insertion of the loss circulation material is
critical in Cremeans, requiring the material to be introduced directly into the
suction portion of the mud pit and immediately transported downhole. With
regard to the teaching away argument, Appellant has not pointed to anything
in Cremeans that criticizes, discredits, or discourages investigation into the
claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(A reference does not teach away by merely disclosing an alternative
invention without criticizing, discrediting, or otherwise discouraging
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investigation into the claimed invention.). Cremeans explains that the lost
circulation material “does not need to be mixed directly in the mud pit,” not
that the lost circulation material cannot be mixed directly in the mud pit.
Cremeans, col. 3, ll. 21-22.
For these reasons, we are not apprised of Examiner error and we
sustain the rejection of claims 13 and 21. Claims 14, 17, and 18 depend
from claim 13 and claim 22 depends from claim 21. These claims are not
argued separately and, therefore, fall with claims 13 and 21. See Br. 13-17.

DECISION
We AFFIRM the Examiner’s decision to reject claims 1, 2, 5, 6, 13,
14, 17, 18, 21, and 22.
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).

AFFIRMED

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