Ex Parte Smith

Patent Trial and Appeal Board

Sep 13, 2018

13652137 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/652, 137 10/15/2012
36735 7590 09/17/2018
PATTERSON & SHERIDAN, L.L.P. /Weatherford
24 Greenway Plaza, Suite 1600
HOUSTON, TX 77046
Roddie R. Smith
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.
WEAT/1058US 8578
EXAMINER
SEBESTA, CHRISTOPHER J
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
09/17/2018 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):
PSDocketing@pattersonsheridan.com
Pair_eOfficeAction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODDIE R. SMITH
Appeal2017-008078
Application 13/652, 137
Technology Center 3600
Before: CHARLES N. GREENHUT, BENJAMIN D. M. WOOD, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-5, 11-18, and 24. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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Appeal2017-008078
Application 13/652, 137
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A seal assembly for use in a tubular, comprising:
a mandrel;
a compressible seal member disposed around the mandrel;
a first movable piston in contact with a first end of the seal
member, the first piston comprising:
a piston head, and
a nistpn extension sealirn.r member extendirn.r at
The Examiner finds Jacob discloses each limitation of independent
claims 1 and 11 except for the claimed "piston extension sealing member
extending at least partially between the mandrel and the compressible seal
member" of claim 1 and similar claim language in claim 11. Final Act. 5.
The Examiner cites Derby for its disclosure of a piston extension sealing
member (Derby's sleeve 144), and the Examiner concludes that it would
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App lication 13/652, 137
Appeal2017-008078
Application 13/652, 137
have been obvious to "modify the lower piston of Jacob to include an
extension member extending therefrom and into a space between the sealing
member and the mandrel [to] allow for the removal of trapped fluid which
could prevent the full engagement of the sealing member with the outside
tubular." Final Act. 5-6 ( citing Derby ,r 34 ).
As cited by the Examiner, Derby describes a problem of fluid
becoming trapped in a central annulus portion of a casing, borehole, or
"tubular" between two packing elements and pistons. Derby ,r 34; see Derby
,r 29 ( describing Figure 3 and explaining that two packing elements 150
compress to engage the walls 12 of the surrounding casing, borehole, or
tubular thereby isolating the annulus into separate three separate portions,
14a, 14b, and 14c ). Derby addresses that problem with sleeve 144,
explaining that "sleeve 144 passing under the packing element 150 allows
[trapped] fluid to flow in the gap between the mandrel 110 and the sleeve
144." Derby ,r 35.
Appellant argues a person of ordinary skill would not have had reason
to modify Jacob in view of Derby to "allow for the removal of trapped fluid"
because, according to Appellant, the device of Jacob does not experience the
problem of fluid becoming trapped in a central annulus portion. Appeal Br.
8-9; accord Reply Br. 2. The Examiner "agrees [that] Jacob does not
disclose such trapped fluid" (Ans. 2), but the Examiner contends there is no
requirement for a reference to recognize a problem to support a hypothetical
modification in an obviousness rejection (Ans. 2-3 (citing MPEP 2144)).
Although it is generally true that an obviousness rejection can be
appropriate where the prior art teaches an invention that is ready for
improvement even though the reference does not itself recognize a problem
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Appeal2017-008078
Application 13/652, 137
or the need for a given improvement, we agree with Appellant that the
Examiner erred in citing the specific problem addressed by Derby as the
reason to modify Jacob because the record includes no evidence that Jacob
would experience that problem or otherwise benefit from the proposed
modification. See Appeal Br. 8-9; Reply Br. 2. In other words, because the
Examiner acknowledges that Jacob does not disclose trapped fluid, and the
Examiner does not provide any evidence or explanation to demonstrate that
such a problem would exist or be recognized by a person of ordinary skill in
the art, we see no reason why a person of ordinary skill would have been
motivated to modify Jacob for the purpose of removing trapped fluid.
Accordingly, we agree with Appellant that the Examiner has not
articulated a reasonable basis for modifying Jacob in view of Derby, and we
do not sustain the Examiner's rejection of independent claims 1 and 11, nor
the rejection of dependent claims 2-5, 12-18, and 24.
DECISION
We reverse the Examiner's rejection of claims 1-5, 11-18, and 24.
REVERSED
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