Ex Parte Vick et al

Patent Trial and Appeal Board

Mar 13, 2013

12040110 (P.T.A.B. Mar. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES D. VICK, JR. and JIMMIE R. WILLIAMSON
____________

Appeal 2011-000315
Application 12/040,110
Technology Center 3600
____________

Before EDWARD A. BROWN, MICHELLE R. OSINSKI and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James D. Vick, Jr. et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b). We REVERSE.
Appeal 2011-000315
Application 12/040,110

2
The Claimed Subject Matter
The claimed subject matter relates to a control system for an annulus
balanced subsurface safety valve. Spec. 1, ll. 20-21. Claims 1, 8 and 15 are
independent. Claim 1, reproduced below, is illustrative of the subject matter
on appeal:
1. A system for operating a safety valve in a
subterranean well, the system comprising:
a piston of the safety valve, the piston being responsive
to displace due to a pressure differential between first and
second chambers exposed to the piston; and
a valve controller which alternately exposes the first
chamber to pressure in an annulus surrounding the safety valve,
and to pressure greater than that in the annulus, the valve
controller being remotely positioned from the safety valve.
The Rejections
The following Examiner’s rejections are before us for review:
(1) claims 1-13,1 15-17, 19 and 20 under 35 U.S.C. § 102(b) as
being anticipated by Gilbert (US 5,101,904; iss. Apr. 7, 1992);
(2) claim 14 under 35 U.S.C. § 103(a) as being unpatentable over
Gilbert and Vick (US 6,998,556 B2; iss. Jan. 24, 2006); and
(3) claim 18 under 35 U.S.C. § 103(a) as being unpatentable over
Gilbert and McCalvin (US 2006/0076149 A1; pub. Apr. 13, 2006).

1 The Examiner’s summary of this rejection does not list claim 13 among the
rejected claims. Final Office Action mailed 12/10/09 (F. O.A.) at 3; Ans. 4.
However, the Examiner discusses claim 13 in the body of the rejection.
F.O.A. at 7; Ans. 8. Accordingly, we include claim 13 among the rejected
claims. See App. Br. 17 (addressing the Examiner’s rejection of claim 13).
Appeal 2011-000315
Application 12/040,110

3
OPINION
Rejection (1) – Anticipation – Gilbert
Claims 1 and 8
Independent claim 1 recites a system for operating a safety valve
including a valve controller “remotely positioned” from the safety valve, and
independent claim 8 recites a method of operating a safety valve that utilizes
a valve controller “remotely positioned” from the safety valve. As to these
claim limitations, the Examiner finds that Gilbert discloses an embodiment
in which a valve controller (control valve 125) is remotely positioned from a
safety valve (which the Examiner describes as “actuated by prong 89” and
“spaced below 89 and a certain distance away from the controller”). Ans. 4
(citing Gilbert, fig. 6B). The Examiner contends, inter alia, that “no safety
valve is shown in either figures 6A or B,” that “[o]perating prong 89 could
be 1 foot long or it could be 200 feet long,” that “the safety valve is not
included in the drawings and is at another (or remote) location,” and that
“[i]f [actuator housing 85] (and the actuator in it) is separated from [safety
valve body] 87 by a distance, it can be said to be ‘remotely positioned from
the safety valve’ as ‘remote’ only requires some amount of relative
distance.” Ans. 14.
We cannot find by a preponderance of the evidence that control
valve 125 is remotely positioned from the safety valve in Gilbert’s
embodiment depicted in Figures 6A and 6B. While we appreciate that
Gilbert’s Figures 6A and 6B do not show the entirety of the safety valve,
they do show the portions of the safety valve, i.e., the upper end of valve
operating prong 89 and the upper end of valve body 87 (see fig. 6B), that
cooperate with the actuator. Actuator housing 85, which houses control
Appeal 2011-000315
Application 12/040,110

4
valve 125 (see fig. 6A), “secures to the upper end of the valve body 87,”
which “is part of the safety valve and has a valve opening prong 89.” Id. at
col. 6, ll. 39-42, fig. 6B; see App. Br. 14 (“The actuator housing 85 is
threaded directly onto the safety valve body 87.”).2 Thus, the actuator
housing 85 and the safety valve body 87, as disclosed in Gilbert, are not
separated by any distance at all. Rather, they are secured together. As such,
the Examiner does not have a sound basis for finding that control valve 125,
which is located within the actuator housing 85, is positioned remotely from
the safety valve.
Accordingly, we do not sustain the rejection of claims 1 and 8, and
claims 2-7 and 9-13 dependent therefrom, under 35 U.S.C. § 102(b) as being
anticipated by Gilbert.
Claim 15
Claim 15 calls for a system for operating a safety valve in a wellbore
of a subterranean well, including a valve controller that is: (1) located
outside of the wellbore; (2) connected to the well pressure and to a
pressurized fluid source; and (3) capable of alternately connecting the well
pressure and the pressurized fluid source to a chamber of the safety valve,
thereby alternately opening and closing the safety valve. The Examiner
finds that these requirements are satisfied by “the element which controls
pressure in line 105 located at the surface.” Ans. 19 (citing Gilbert, col. 6, ll.
56-59). The Examiner acknowledges that the required valve controller is not

2 In operation, an actuating pressure 103 (see fig. 6A) forces control valve
125 to the open position, which in turn forces actuator piston 97 and
actuating element 101 (see fig. 6B) downward to engage the valve opening
prong 89 of the safety valve and thereby open the safety valve. Col. 7,
ll. 26-32; see also col. 6, ll. 52-54.
Appeal 2011-000315
Application 12/040,110

5
expressly disclosed in Gilbert, but contends that “it still must inherently be
present; something must control the pressure in line 105 at the surface.”
Ans. 19.
We disagree with the Examiner’s finding that Gilbert inherently
discloses the valve controller of claim 15. Gilbert discloses applying a
pressure above the annulus pressure to open the safety valve. Gilbert, col. 7,
ll. 12-33. Gilbert also discloses that “[i]f the pressure in the control line 105
drops to hydrostatic due to damage from a storm or otherwise,” then the
control valve 125 and the vent valve 111 of the actuator in the well will
operate to vent the pressure in the actuating pressure section 95A to the
annulus, “permitting the safety valve return spring 96 to withdraw the prong
89, thus closing the valve to shut-in the well.” Id. at col. 7, ll. 37-43. The
Examiner’s rejection does not explain why a valve controller located outside
of the wellbore, at the surface, is necessary in Gilbert’s embodiment to
perform these functions.3
Accordingly, we do not sustain the rejection of claim 15, and claims
16, 17, 19 and 20 dependent therefrom, under 35 U.S.C. § 102(b) as being
anticipated by Gilbert.
Rejections (2) and (3) – Obviousness – Gilbert and Vick or McCalvin
Claim 14 depends from claim 8, and claim 18 depends from claim 15.
The Examiner does not rely on Vick or McCalvin to cure the deficiencies in
Gilbert as discussed supra in connection with claims 8 and 15. Accordingly,

3 See Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir.
2011) (“Inherency can be established when ‘prior art necessarily functions in
accordance with, or includes, the claimed limitations.’”) (quoting In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002)).
Appeal 2011-000315
Application 12/040,110

6
for the reasons discussed supra in connection with claims 8 and 15, we do
not sustain the rejections of claims 14 and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Gilbert and either Vick or McCalvin.

DECISION
We reverse the rejection of claims 1-13, 15-17, 19 and 20 under
35 U.S.C. § 102(b) as being anticipated by Gilbert.
We reverse the rejections of claims 14 and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Gilbert and either Vick or McCalvin.

REVERSED

msc