Ex Parte Vick et al

Patent Trial and Appeal Board

Jul 23, 2013

12204346 (P.T.A.B. Jul. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES D. VICK, JR. and JIMMIE R. WILLIAMSON, JR.
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Appeal 2011-006017
Application 12/204,346
Technology Center 3600
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Before GAY ANN SPAHN, MICHELLE R. OSINSKI, and
ADAM V. FLOYD, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 6-19, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over
Du (US 6,688,860 B2, iss. Feb. 10, 2004) and Heijnen (US 6,575,236 B1,
iss. Jun. 10, 2003). Ans. 3-8. Claims 5 and 20 are cancelled. App. Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to “equipment utilized . . . with a
subterranean well and, . . . more particularly[,] provides for fluid isolating
pressure equalization in subterranean wells.” Spec. 1, ll. 17-21. Claims 1
and 11 are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the appealed subject matter.
1. A well system, comprising:
a well tool including a chamber therein containing an
electrical assembly in a dielectric first fluid; and
a pressure equalization apparatus including a flowpath
having first and second opposite ends, the first end being
connected to the chamber, the second end being connected to a
source of a second fluid, the flowpath extending alternately
upward and downward between the first and second ends, a line
extending through the flowpath, and pressure transmission
through the first and second opposite ends.

ANALYSIS
The Examiner found that Du discloses substantially all of the
limitations of the claimed subject matter, “except for a line extending

1 Appellants identify the real party in interest as Halliburton Energy
Services, Inc. App. Br. 3.
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through the flowpath of the apparatus.” Ans. 4. The Examiner found that
Heijnen teaches that it is “well known to run control lines through existing
flowpaths in a tool.” Id. at 5 (emphasis omitted). The Examiner concluded
that
It would have been . . . obvious to one of ordinary skill in
the art . . . to have modified the apparatus of Du such that
control lines needed downhole were run through the flowpath
of the pressure equalization apparatus as suggested by Heijnen
in order to have eliminated the need to form additional
pathways through the apparatus.
Id.
The Examiner’s rejection is first predicated on Heijnen teaching
running a control line through an existing flowpath in a tool. Ans. 5.
Appellants contend that “Heijnen’s shaft bore is not disclosed as being a
flowpath,” nor is “capable of being used as a flowpath, since it is closed off
by the connector 100.” Reply Br. 15. The Examiner’s position is that “even
with the presence of the connector 100, fluid introduced to the central bore
would ‘flow’ to some degree” and “would allow the movement of fluid
therein/through.” Ans. 10. Even if fluid introduced into Heijnen would flow
to at least some minimal degree, Heijnen does not actually teach the
existence of fluid in the central bore (see Reply Br. 15), and accordingly,
cannot be considered to teach running control lines through flowpaths in a
tool as found by the Examiner. As such, the Examiner’s conclusion of
obviousness of the subject matter of independent claims 1 and 11 is based on
an erroneous finding as to the scope and content of Heijnen.
To the extent the Examiner’s rejection may instead be alternatively
predicated, not on Heijnen teaching it being known to run control lines
though flowpaths in a tool, but merely on Heijnen teaching it being known to
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run control lines “through existing pathways in wellbore tools” (Ans. 10
(emphasis added)) or “through a hollow shaft or pipe” (Ans. 9 (citing
Heijnen, col. 3, ll. 28-34) (emphasis added)), the Examiner has not
articulated a reason having rational underpinnings for making the proposed
combination of Du and Heijnen. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)).
In particular, the Examiner has not provided adequate reasoning to
explain why a person of ordinary skill in the art would modify Du’s
labyrinth assembly to include a line extending through its tortuous flowpath
based on Heijnen’s mere disclosure of running an electric cable through a
bore in a drive shaft. The basis of the Examiner’s rejection is “general
common sense” (Ans. 11), but Appellants contend that “it would not be
general common sense for a person having ordinary skill in the art to
combine the teachings of Du and Heijnen as proposed by the [E]xaminer.”
Reply Br. 15. Appellants elaborate that “extending an electrical or optical
line through a generally straight conduit in a closed-off shaft is significantly
different from extending an electrical or optical line through the plurality of
crisscrossing and zigzagging tubing paths of the multi-orientable labyrinth
assembly of Du.” Id. (citing Du, col. 14, ll. 12-18 and figs. 14-15).
Moreover, Heijnen’s straight conduit is not disclosed as having any fluid
therein (see Reply Br. 15), while Du’s labyrinth assembly 180 is fluidly
coupled to motor and well fluids (see Du, col. 13, ll. 59-61). Without an
articulated reasoning based on rational underpinnings for combining the
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prior art references as proposed, the Examiner’s rejection appears to be the
result of an impermissible hindsight reconstruction. See App. Br. 11-13;
Reply Br. 11-14.
For the foregoing reasons, the Examiner erred in concluding that the
subject matter of independent claims 1 and 11 would have been obvious
from the combination of Du and Heijnen, and we do not sustain the rejection
of independent claims 1 and 11, and claims 2-4, 6-10, 12-19, 21, and 22
which depend therefrom, under 35 U.S.C. § 103(a) as unpatentable over Du
and Heijnen.

DECISION
The Examiner’s rejection of claims 1-4, 6-19, 21, and 22 under 35
U.S.C. § 103(a) is REVERSED.

REVERSED

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