Ex Parte Wyble et al

Patent Trial and Appeal Board

Feb 16, 2018

13832404 (P.T.A.B. Feb. 16, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/832,404 03/15/2013 Kevin Joseph Wyble 1814-73900 2868
92297 7590 02/21/2018
Pnnlp.v Rose P P
EXAMINER
P.O.Box 3267
Houston, TX 77253
CHOU, JIMMY
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
02/21/2018 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):
pathou @conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN JOSEPH WYBLE,
DANIEL LYLE HANNAHS, DARYL STEVENSON, and
SHAWN LEE CUNNINGHAM1
Appeal 2017-005603
Application 13/832,404
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 3—9, 17, and 19—23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, National Oilwell Varco, L.P., which, according
to the Appeal Brief, is the real party in interest. Appeal Br. 4.
Appeal 2017-005603
Application 13/832,404
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A system for heat treating a tubular, comprising:
a first coil configured to circumferentially surround the
tubular and induce, from an outside of the tubular, current flow
in a cylindrical portion of the tubular adjacent the first coil;
a second coil configured to be inserted into a bore of the
tubular and induce, from within the tubular, in conjunction with
the first coil, current flow in the cylindrical portion of the
tubular, wherein the first coil and the second coil are positioned
to inductively heat the cylindrical portion of the tubular at the
same time; and
one or more controllers that control current flow to the
first coil and the second coil for inducing current flow in the
cylindrical portion of the tubular, the one or more controllers
configured to:
provide alternating current to the first coil at a first
frequency; and
provide alternating current to the second coil at a
second frequency while providing the alternating current
to the first coil at the first frequency, wherein the first
frequency is different from the second frequency.
REJECTIONS
I. Claims 1, 3, 5—8, 17, 20, and 21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over McNealy (US 4,418,258, iss.
Nov. 29, 1983) and Mucha (US 4,757,170, iss. July 12, 1988).
II. Claims 4 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McNealy, Mucha, and Petrenko
(US 2004/0149734 Al, pub. Aug. 5, 2004).
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Application 13/832,404
III. Claims 9 and 22 stand rejected as unpatentable over McNealy,
Mucha, Sato (US 9,158,866 B2, iss. Oct. 13, 2015), and Regan
(US 2011/0253702 Al, pub. Oct. 20, 2011).
IV. Claim 23 stands rejected as unpatentable over McNealy and
Yoshida (US 4,585,917, iss. Apr. 29, 1986).
DISCUSSION
Independent claim 1 recites, in relevant part, a controller configured to
“provide alternating current to the second coil at a second frequency while
providing the alternating current to the first coil at the first frequency,
wherein the first frequency is different from the second frequency.” Appeal
Br. 33 (Claims App.). Independent claim 17 similarly recites, in relevant
part, that “the frequency of the alternating current provided to the exterior
induction coil has a frequency that is lower than the frequency of alternating
current provided to energize the interior induction coil.” Id. at 37.
Appellant argues that the claimed subject matter would not have been
obvious because there is no reason to modify the apparatus of McNealy
based on the teachings of Mucha to provide current to the first and second
coils at different frequencies. See id. at 19-21. We agree that a sustainable
case of obviousness has not been established.
In rejecting the independent claims, the Examiner finds that McNealy
discloses a system for heat treating a tubular, substantially as claimed,
including a first coil that surrounds a tubular (i.e., exterior induction coil), a
second coil that is inserted into a tubular bore (i.e., interior induction coil),
and a controller to provide current to the coils. See Final Act. 2—3, 5—6. The
Examiner acknowledges that McNealy does not disclose that current is
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Application 13/832,404
provided to the exterior coil at a different frequency (e.g., lower) than the
current provided to the interior coil. See id. at 3, 6. However, the Examiner
finds that Mucha teaches providing current to a first coil at a frequency that
is different (e.g., lower) than the frequency of the current provided to a
second coil. See id. at 3—4, 6—7. The Examiner determines that it would
have been obvious “to adjust frequency in order to reduce cost of the power
supply.” Id. at 4, 7 (citing Mucha, col. 6,11. 25—34).
Here, the Examiner errs by not articulating sufficient reasoning,
supported by rational underpinnings, why a person having ordinary skill in
the art would have been prompted to modify the teachings of McNealy as
proposed. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(stating that “[^ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support: the legal conclusion of
obviousness ” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).
McNealy discloses an induction heating apparatus in which tubular
workpiece 30 is disposed between inner induction coils 14 and outer
induction coils 16. See McNealy, col. 3,11. 15—17. According to McNealy,
“two coils are employed to avoid a temperature gradient in the workpiece
30.” Id. col. 3,11. 17—19. “[Controller 18 maintains . . . temperature in an
accurate manner by controlling the output of generator and load coil
transformer 12 to induction coils 14 and 16.” Id., col. 4,11. 16—19. In other
words, McNealy discloses a tubular workpiece heating apparatus having
inner and outer induction coils that simultaneously heat a workpiece, but the
reference is silent as to providing different (or same) current frequencies to
each coil.
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Application 13/832,404
Mucha discloses, with reference to Figures 1 and 2, “apparatus A for
progressively scan hardening outer generally cylindrical surface 10 of a
cylindrical workpiece.” Mucha, col. 9,11. 35—37. The apparatus includes
closely spaced, coaxially aligned coils or inductors 50 and 100. See id., col.
11,11. 9-11. Mucha discloses that the frequency of inductor 50 “is below
approximately 50 KHz.” Id., col. 10,11. 47-48. Inductor 100 “has a
frequency between 100-450 KHz and preferably a frequency above 200
KHz.” Id., col. 11,11. 33—35. According to Mucha, “high power density
preheating at low frequency, rapid final heating of high power density[,] and
then an immediate quench hardening for the outer toothed surface of gears is
accomplished without requiring large and expensive power supplies.” Id.,
col. 6,11. 26—30. In particular, “[a]s the gear is moved downwardly through
inductors 50,100, the gear is first preheated by audio frequency inductor 50,
then final heated by high audio frequency exceeding about 100 KHz.” Id.,
col. 11,11. 56—59. In other words, Mucha discloses progressively heating the
outer surface of a workpiece by passing the workpiece through a low-
frequency induction coil for preheating and a high-frequency induction coil
for final heating.
Regarding the Examiner’s proposed combination of teachings from
McNealy and Mucha, the reasoning provided in the rejection makes only a
conclusory proposal “to adjust frequency” of McNealy’s apparatus without
adequately explaining how or why one of ordinary skill in the art would
have been led—based on the teachings of Mucha—to provide current to the
first (i.e., exterior) coil at a frequency that is different (e.g., lower) than the
frequency of the current provided to the second (e.g., interior) coil. In this
regard, Appellant persuasively asserts that the Examiner’s stated “reason
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only applies to the two-stage heating of an exterior surface (using only
exterior coils) explicitly described in Mucha, which has no relevance to the
simultaneous heating of the same element in McNealy or the present
claims.” Appeal Br. 20; see also id. at 21 (asserting that “[njothing in the
asserted motivation would result in changing one frequency relative to the
other”). In other words, the Examiner does not adequately explain how or
why Mucha’s disclosure of using multiple exterior coils at different current
frequencies to progressively heat the outer surface of a workpiece—thereby
reducing power supply size and cost—relates to McNealy’s use of inner and
outer coils to simultaneously heat a tubular workpiece from the outer surface
and the inner surface to avoid temperature gradients.
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). In this case, absent improper hindsight
reconstruction, we do not see a sufficient reasoned explanation, based on a
rational underpinning, as to why one of ordinary skill in the art would have
been led to modify the heat treatment: apparatus of McNealy—based on the
teachings of Mucha-—-to provide current to the first (i.e., exterior) coil at a
frequency that is different (e.g., lower) than the frequency of the current
provided to the second (e.g., interior) coil, and an adequate reason for such
modification is not otherwise evident from the record.
Moreover, although we appreciate that the findings relied upon from
McNeal y and Mucha appear to be supported by a preponderance of the
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evidence, we note that a claim “composed of several [features] is not proved
obvious merely by demonstrating that each [feature] was, independently,
known in the prior art.” KSR, 550 U.S. at 418. Rather, a sustainable
obviousness rejection further needs to explain the reasoning by which those
findings support the Examiner’s conclusion of obviousness. Perfect Web
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-30 (Fed. Cir. 2009). In
the present case, Rejection I fails to meet this required standard.
We note that the Examiner relied on Petrenko, Sato, Regan, and
Yoshida for teaching additional features of dependent claims in Rejections
II—IV, but did not articulate any findings or reasoning that would cure the
aforementioned deficiency with respect to the proposed combination of
McNealy and Mucha2 as applied in Rejection I. See Final Act. 8—12.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case of obviousness for the claimed
subject matter. On this basis, we do not sustain the rejections of claims 1, 3—
9, 17, and 19-23 under 35 U.S.C. § 103(a).
2 Notably, despite the Examiner’s apparent recognition that Rejection IV
should have incorporated Mucha, the stated rejection does not incorporate
Mucha. Final Act. 11—12; Ans. 12—13, 19; see Reply Br. 19 (arguing that
citation to Mucha for the first time in the Answer would constitute a new
rejection). Whether or not Mucha is incorporated in Rejection IV is of no
real consequence to the disposition of this rejection, for the reasons
discussed above.
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DECISION
The Examiner’s decision rejecting claims 1, 3—9, 17, and 19-23 is
reversed.
REVERSED
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