Ex Parte Veneruso et al

Patent Trial and Appeal Board

Mar 21, 2013

11640637 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANTHONY F. VENERUSO, DAVID McCALVIN,
DWAYNE MAY, and FABIEN CENS
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Appeal 2010-011444
Application 11/640,637
Technology Center 3600
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Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and JAMES A.
TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/640,637

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STATEMENT OF THE CASE1
Anthony Veneruso, et al. (Appellants) seek our review under 35
U.S.C § 134 of the Examiner’s final decision rejecting claims 1, 3-6, 9-12,
14, 16, 17, 19-30 and 32.2 We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
Appellants’ claimed invention relates to a linear induction motor-
operated downhole tool. Spec. [001].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A tool usable with a well, comprising:
a tool operator;
a linear induction motor to actuate the tool operator; and
a controller to cause the linear induction motor to apply a first
force to the tool operator to transition the tool to a
predetermined state and apply a second force smaller than
the first force to the tool operator to maintain the tool in the
predetermined state.
The Examiner relies upon the following evidence:
Nakamura US 4,454,457 Jun. 12, 1984
Jakubiec US 4,903,937 Feb. 27, 1990

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed Feb. 10, 2010) and Reply Brief (“Reply Br.,” filed Jun. 28, 2010), and
the Examiner’s Answer (“Ans.,” mailed Apr. 27, 2010).
2 Although Appellants state that the “final rejections of claims 2, 17, 30, 34,
39, and 40” are the subject of this appeal (App. Br. 5), we understand from
Appellants’ arguments (App. Br. 9) that all claims addressed in the final
rejection (claims 1, 3-6, 9-12, 14, 16, 17, 19-30 and 32), are the subject of
this appeal and further note that Appellants’ Claims Appendix does not
include claims 2, 34, 39 or 40.
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Dietz US 6,619,388 B2 Sep. 16, 2003
Claims 1, 3-6, 9, 10, 14, 16, and 26-30 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Dietz.
Claims 1, 3-6, 9, 10, 14, 16, 17 and 19-30 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Dietz and Jakubiec.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietz.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dietz and Nakamura.
FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
ANALYSIS
Anticipation based on Dietz
Claims 1, 3-6, 9, 10, 14, 16, and 26-30
We agree with Appellants that the Examiner has not established a
prima facie showing of anticipation because the Examiner has not shown
that Dietz discloses a controller to cause a linear induction motor to apply a
first force to a tool or valve operator to transition to a predetermined state
and to apply a second force smaller than the first force to maintain the tool
or valve in the predetermined state. While the Examiner asserts that
controller (79) of Dietz is “capable” of exerting the respective forces as
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claimed (Ans. 8), the Examiner has not identified a disclosure in Dietz that
expressly or inherently describes such use of controller (79). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient." Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269
(Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981));
see also Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed.
Cir. 2002) (“Inherent anticipation requires that the missing descriptive
material is ‘necessarily present,’ not merely probably or possibly present, in
the prior art.” (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999))). Accordingly, we cannot affirm the Examiner’s rejection of claims
1, 3-6, 9, 10, 14, 16, and 26-30 as anticipated by Dietz.
Obviousness based on Dietz and Jakubiec
Claims 1, 3-6, 9, 10, 14, 16, 17 and 19-30
We agree with Appellants that the Examiner has not established a
prima facie showing of obviousness because the Examiner has not shown
that Dietz or Jakubiec discloses a controller to cause a linear induction motor
to apply a first force to a tool or valve operator to transition to a
predetermined state and to apply a second force smaller than the first force
to maintain the tool or valve in the predetermined state. The disclosure of
Dietz is addressed above. With respect to Jakubiec, the Examiner maintains
that:
Jakubiec discloses a linear induction motor (col. 5, lines 50-51)
and a controller 300 that causes the induction motor to exert
either a first force to transition and then maintain the valve to a
predetermined state or a second smaller force to transition and
then maintain the valve in the predetermined state (col. 2, lines
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30-31). The claims do not require that the two forces be
performed together or in sequence, merely that the controller is
capable of exerting two differently sized forces, the larger of
which can at least transition the valve to the predetermined state
and the smaller of which can at least maintain the valve in the
predetermined state.
Ans. 10. Contrary to the Examiner’s assertion, the claims require a sequence
of two actions consisting of applying a first force to transition to a
predetermined state and a second, smaller force to maintain a predetermined
state. The Examiner’s assertion that Jakubiec discloses a controller capable
of exerting two differently sized forces, alone, is not sufficient to show that
Jakubiec renders obvious a controller that applies one force to transition to,
and a second force to maintain, a predetermined state. Accordingly, we
cannot affirm the Examiner’s rejection of claims 1, 3-6, 9, 10, 14, 16, 17 and
19-30 as obvious over Dietz and Jakubiec.
Obviousness based on Dietz
Claims 11 and 12
Claims 11 and 12 depend upon claim 1. We find that the Examiner
has not established a prima facie showing of obviousness because the
Examiner has not shown that Dietz discloses a controller to cause a linear
induction motor to apply a first force to a tool or valve operator to transition
to a predetermined state and to apply a second force smaller than the first
force to maintain the tool or valve in the predetermined state as discussed
above with respect to the anticipation rejection of claim 1.

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Obviousness based on Dietz and Nakamura
Claim 32
Claim 32 depends upon claim 26. We find that the Examiner has not
established a prima facie showing of obviousness because the Examiner has
not shown that Dietz discloses a controller to cause a linear induction motor
to apply a first force to a tool or valve operator to transition to a
predetermined state and to apply a second force smaller than the first force
to maintain the tool or valve in the predetermined state as discussed above
with respect to the anticipation rejection of claim 26.
CONCLUSIONS OF LAW
We conclude that the Appellants have overcome the Examiner’s
rejection of claims 1, 3-6, 9, 10, 14, 16, and 26-30 under 35 U.S.C. § 102(b)
as being anticipated by Dietz.
We conclude that Appellants have overcome the Examiner’s rejection
of claims 1, 3-6, 9, 10, 14, 16, 17 and 19-30 under 35 U.S.C. § 103(a) as
being unpatentable over Dietz and Jakubiec.
We conclude that Appellants have overcome the Examiner’s rejection
of claims 11 and 12 under 35 U.S.C. § 103(a) as being unpatentable over
Dietz.
We conclude that Appellant has overcome the Examiner’s rejection of
claim 32 under 35 U.S.C. § 103(a) as being unpatentable over Dietz and
Nakamura.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 3-6, 9-
12, 14, 16, 17, 19-30 and 32.
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REVERSED

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