Ex Parte Varkey

Patent Trial and Appeal Board

Aug 25, 2016

13107252 (P.T.A.B. Aug. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/107,252 05/13/2011
35204 7590 08/29/2016
SCHLUMBERGER ROSHARON CAMPUS
10001 Richmond
IP - Center of Excellence
Houston, TX 77042
FIRST NAMED INVENTOR
Joseph Varkey
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.
89.0625-US-NP 7015
EXAMINER
NGUYEN, CHAU N
ART UNIT PAPER NUMBER
2847
NOTIFICATION DATE DELIVERY MODE
08/29/2016 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):
usdocketing@slb.com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH VARKEY
Appeal2014-008417
Application 13/107,252
Technology Center 2800
Before JOHN A. EVANS, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
A. "1"1 ,1 "1 • "1 ,..,,,-TT#'I~ 1\1,..,,AI/'- £',"1 Appeuant' seeKs our review unaer j) u.~.L. s U4~aJ or me
Examiner's Final Rejection of Claims 11-13, 15-17, 27-29, 31, and 32.
App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.2
1 The Appeal Brief identifies Schlumberger Technology Corporation, as the
real party in interest. App. Br. 2.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed Feb. 18, 2014, "App. Br."), the Reply Brief
(filed July 31, 2014, "Reply Br."), the Examiner's Answer (mailed June 2,
2014, "Ans."), the Final Action (mailed Sep. 17, 2013, "Final Act."), and the
Specification (filed May 13, 2011, "Spec.") for their respective details.
Appeal2014-008417
Application 13/107,252
STATEMENT OF THE CASE
The invention
The claims relate to a cable for use with a downhole pump. See
Abstract. 3
Claims 11 and 27 are independent. An understanding of the invention
can be derived from a reading of exemplary Claim 11:
11. A cable for use with a downhole pump, comprising:
a cable core that comprises
three insulated conductor cables wherein each of the three
insulated conductor cables comprises a polymer insulation layer
and an outer polymer layer wherein the three outer polymer
layers are deformed and chemically bonded to each other, and
a polymer layer chemically bonded to the three outer
polymer layers of the three insulated conductor cables wherein
the polymer layer comprises a circular profile; and
a strength member layer that comprises strength members
chemically bonded to a polymer matrix wherein the polymer
matrix is chemically bonded to the cable core.
3 Because we write for the Real Party, familiarity with the background of
this case is assumed and presented herein only to the extent necessary to
provide context for the analysis that follows. See U.S. Ethernet Innovations,
LLCv. Acer, Inc., 2015-1640, 2015-1641, 2016 WL 1622309, at *l n.l
(Fed. Cir. Apr. 25, 2016).
2
Appeal2014-008417
Application 13/107,252
References and Rejections
The Examiner relies upon the prior art as follows:
Varkey, et al. US 2007/0107928 Al
(the '928 Application)
Varkey, et al. US 2008/0128152 Al
(the '152 Application)
Varkey US 2009/0089998 Al
(the '998 Application)
The claims stand rejected as follows:
May 17, 2007
June 5, 2008
Apr. 9, 2009
1. Claims 11and15-17 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over the '152 and '998 Applications. Final Act.
2--4.
2. Claims 11-13, 15-17, 27-29, 31, and 32 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over the '928 and '998
Applications. Final Act. 4-6.
ANALYSIS
We have reviewed the rejections of Claims 11, 12, 13, 15, 16, 17, 27,
28, 29, 31, and 32 in light of Appellant's arguments that the Examiner erred.
We have considered in this decision only those arguments Appellant actually
raised in the Briefs. Arguments that Appellant could have made but chose
not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
With regard to Claims 11-13, 15-17, 27-29, and 32, we are not
persuaded that Appellant identifies reversible error. Upon consideration of
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Appeal2014-008417
Application 13/107,252
the arguments presented in the Appeal Brief and Reply Brie±: we agree with
the Examiner that these pending claims are unpatentable over the cited
combination of references. We adopt as our own the findings and reasons
set forth in the rejection from which this appeal is taken and in the
Examiner's Answer. We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We
consider Appellant's arguments seriatim, as they are presented in the Appeal
Brief, pages 3-23. With regard to Claim 31, Appellant has persuaded us that
the Examiner erred.
Claims 11 and 15-17: OBVIOUSNESS OVER THE' 152 AND '998 APPLICATIONS
Preamble recitation: Downhole pump.
Initially, the Examiner (see Final Act. 3) and Appellant (see App. Br.
6) dispute whether the cited art discloses a cable for use with a downhole
pump. Subsequently, the Examiner's Answer finds the preamble of Claim
11 recites a non-limiting intended use. Ans. 3. "In general, the preamble
limits a claim if it recites essential structure or is otherwise 'necessary to
give life, meaning, and vitality' to the claim." In re Taylor, 484 F. App'x
540, 543 (Fed. Cir. 2012). Conversely, where, as here, "a patentee defines a
structurally complete invention in the claim body and uses the preamble only
to state a purpose or intended use for the invention, the preamble is not a
claim limitation." Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).
Because we find the preamble merely recites an intended use for the claimed
cable, we decline to afford patentable weight to the recitation "downhole
pump."
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Appeal2014-008417
Application 13/107,252
Three insulated conductor cables.
The Examiner finds Varkey '152 discloses a cable for use with a
downhole pump, comprising a cable core that comprises three insulated
conductor cables. Final Act. 3.
Figure 2 from the '152 Application
Claim 11 recites, inter alia, "three insulated conductor cables wherein
each of the three insulated conductor cables ... ". With reference to Figure
2, Appellant contends the '152 Application discloses various arrangements
of six outer cables [ 18] about a central cable [ 16]. App. Br. 8. Appellant
argues the Examiner's selection of three of the '152 Application's seven
cables is arbitrary and not evidence-based. Id.
The Examiner finds Claim 11 recites the transitional term
"comprising," therefore, the claim does not exclude additional, un-recited
elements. Ans. 4 (citing Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376
(Fed. Cir. 2004).
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Appeal2014-008417
Application 13/107,252
Appellant argues Mars relates to "ingredients" such that the open term
comprising does not limit additional, un-recited ingredients. Reply Br. 7. In
contrast to Mars, Appellant argues Gillette Co. v. Energizer Holdings, Inc.,
405 F.3d 1367 (Fed. Cir. 2005), relates to a unique structural arrangement of
elements:
The language of the claims depending from claim 1 also support
reading "comprising" and "group of' as open terms. Claim 2,
which depends from claim 1, adds the limitation that "the span
between the first blade edge and the guard is substantially smaller
than a span between the edges of the first and second blades and
the span between the edges of the second and third blades." The
patent drafter's use of "a span" between the first and second
blades recognizes that more than one such span may exist. On
the other hand, the drafter's use of "the span" to identify the span
between the guard and first blade recognizes that only one such
span is possible.
Reply Br. 7.
Appellant contends the recitations "wherein the three outer polymer
layers," "the three outer polymer layers," "of the three insulated conductor
cables," places the structural arrangement recited therein in a factual position
akin to the subject matter of Gillette. Therefore, the recitation "the three
outer polymer layers of the three insulated conductor cables," refers to a
claimed unique arrangement of components. Id.
Appellant's argument is not persuasive. Rather than specifying a
unique structural arrangement of cables, we find the accused recitations
merely serve to refer to the recitations that supply antecedent basis and so
render the claims definite.A claim is indefinite when it contains words or
phrases whose meaning is unclear. In re Packard, 751F.3d1307, 1314 (Fed.
Cir. 2014 ). The lack of clarity could arise where a claim refers to "said
lever" or "the lever," where the claim contains no earlier recitation or
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Appeal2014-008417
Application 13/107,252
limitation of a lever. M.P.E.P. § 2173.05(e)("Lack of Antecedent Basis").
Claim 11 recites, inter alia, "a cable core that comprises three insulated
conductor cables." This recitation is subsequently followed by recitations of
"the three insulated cables." We find these subsequent recitations of the
term "the" serve to tie the following recitations to their antecedent basis.
Appellant fails to provide any evidence that the Specification defines
the claimed cable core such that it is limited to only three insulated
conductor cables. The Specification merely provides an example of a cable
core that has three cables: "[f]or example, as shown in Figures 3A and 3B,
three insulated conductor cables 34 may be used to manufacture the cable
core 42." Spec., ,-i 29.
Wherein the polymer layer comprises a circular profile.
Claim 11 recites, inter alia:
a polymer layer chemically bonded to the three outer polymer
layers of the three insulated conductor cables 1r'Vherein the
polymer layer comprises a circular profile.
Claim 11 (emphasis added).
Appellant contends the '152 Application teaches an insulating polymer layer
22 disposed about the cables, but that layer 22 disposed about any three
cables is not circular. App. Br. 8-9 (citing Varkey '152, ,-i 21; Fig. 2).
Appellant contends the '998 Application also fails to teach the circular,
polymer layer. Id. at 9.
The Examiner finds the "152 Application discloses a cable comprising
a polymer layer having a circular profile is bonded to the three outer
polymer layers of three insulated conductor cables. Final Act. 3. The
Examiner makes similar findings regarding the '928 Application. Id. at 4.
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Application 13/107,252
We agree with the Examiner (Final Act. 3) that the prior art teaches a
circular profile around the bundle of seven cables, which comprises a bundle
of three cables as noted above. The claimed circular profile is therefore
present in the prior art as-is, without need to modify it to have only three
cables.
Given the prior art comprises a circular polymer layer over a seven-
cable bundle, Appellant fails to present any evidence that providing a
circular polymer layer over a three-cable bundle "represented an unobvious
step over the prior art." Leapfrog Enterprises, Inc., v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed Cir. 2007).
In view of the foregoing, we are not persuaded the Examiner errs.
CLAIMS 11-13 AND 15-17: OBVIOUSNESS OVER THE
'928 AND '998 APPLICATIONS
Appellant advances arguments substantially similar to those discussed
above. For the reasons discussed above, we are not persuaded the Examiner
errs.
CLAIMS 27-29 AND 32: OBVIOUSNESS OVER
THE '928 AND '998 APPLICATIONS
Appellant advances arguments substantially similar to those discussed
above. For the reasons discussed above, we are not persuaded the Examiner
errs.
CLAIM31
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Application 13/107,252
Claim 31 recites "[t]he cable of claim 27, wherein the cable core
comprises an optical fiber disposed therein." Appellant contends that the
'928 Application discloses an optical fiber, but does not provide any
teaching of where within the fiber the cable is disposed. App. Br. 22.
The Examiner finds "Varkey 152 discloses ... 'optical fiber
containing cables.' We agree that Varkey '152 does disclose cables having
optical fiber therein.
However, Claim 31 is not limited merely to a cable comprising an
optical fiber. Claim 31 specifies the optical fiber occupies a specific
location, i.e., the core, within the fiber. We agree with Appellant that the
'152 Application does not teach the location of the fiber within the cable.
DECISION
The rejection of Claim 31under35 U.S.C. § 103 is REVERSED.
The rejection of Claims 1-6, 8-26, 28-30, 32--43, 45, and 46 under 35
U.S.C. § 103 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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