Mario R. Lugo

Patent Trials and Appeals Board

Dec 31, 2019

13160032 - (D) (P.T.A.B. Dec. 31, 2019)

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.
13/160,032 06/14/2011 Mario R. LUGO 1784-16 2565
24106 7590 12/31/2019
Egbert Law Offices, PLLC
1001 Texas Ave., Suite 1250
Houston, TX 77002
EXAMINER
TOLEDO-DURAN, EDWIN J
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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):
KMCDANIEL@EGBERTLAWOFFICES.COM
MAIL@EGBERTLAWOFFICES.COM
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARIO R. LUGO

Appeal 2018-000383
Application 13/160,032
Technology Center 3600
____________

Before ROBERT L. KINDER, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–4, 6–16, and 18–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies “[t]he Assignee, TRENDSETTER
ENGINEERING, INC.” as the real party in interest. Appeal Br. 5.
Appeal 2018-000383
Application 13/160,032

2
ILLUSTRATIVE CLAIM
1. A diverter system for a subsea well comprising:
a blowout preventer having an interior passageway with
an inlet at a bottom thereof and an outlet at a top thereof, said
interior passageway passing hydrocarbons therethrough; and
a diverter affixed to said outlet of said blowout preventer,
said diverter having a flow passageway extending therethrough
and communicating with said interior passageway of said
blowout preventer, said flow passageway being a pipe that
extends vertically between said blowout preventer and a
location above said diverter, said flow passageway being
axially aligned with said interior passageway of said blowout
preventer, said flow passageway of said diverter receiving a
flow of the hydrocarbons from said interior passageway of said
blowout preventer, said diverter having a first valve in said flow
passageway so as to change a flow rate of the hydrocarbons
flowing through said flow passageway, said diverter having at
least one channel in communication with said flow passageway,
the channel having a second valve thereon, said second valve
movable between an open position and a closed position, said
open position allowing the hydrocarbons from said flow
passageway to pass outwardly of said diverter through the
channel, said closed position of said second valve blocking the
hydrocarbons from passing through the channel; and
at least one flow line connected to said flow passageway,
said at least one flow line having a third valve thereon, said
third valve movable between an open position and a closed
position, said open position of said third valve passing a
chemical into the hydrocarbons within said flow passageway,
the chemical selected from the group consisting of methane
hydrates, glycol and dispersants, said closed position of said
valve blocking the passing of the chemical into said flow
passageway.

Appeal 2018-000383
Application 13/160,032

3
REFERENCES
Name Reference Date
Roche US 4,546,828 Oct. 15, 1985
Bourgoyne et al.
(“Bourgoyne”)
US 6,470,975 B1 Oct. 29, 2002
Donald (“Donald ’941”) US 6,823,941 B2 Nov. 30, 2004
Donald et al.
(“Donald ’067”)
US 8,066,067 B2 Nov. 29, 2011
Adams US 2012/0055573 A1 Mar. 8, 2012
Cargol, Jr. et al. (“Cargol”) US 2012/0125623 A1 May 24, 2012

REJECTIONS
I. Claims 1–4, 7, 10, 11, 13, 14, and 20 are rejected under
35 U.S.C. § 103(a) as unpatentable over Cargol and Roche.
II. Claims 6, 7, 12, 15, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cargol, Roche, and Donald ’067.
III. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cargol, Roche, and Bourgoyne.
IV. Claims 9 and 19 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Cargol, Roche, and Donald ’941.
V. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cargol, Roche, and Adams.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
The Appellant argues independent claims 1, 10, and 14 as a group.
Appeal Br. 20. No claim is argued separately. Claim 1 is selected for
analysis herein. See 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2018-000383
Application 13/160,032

4
The Appellant contends that the cited Cargol and Roche references
lack various claim limitations. Appeal Br. 20–25. The Examiner addresses
each of the points raised by the Appellant. See Answer 11–16.
As to the Appellant’s position that Cargol lacks the claimed “flow
passageway” and “pipe” (Appeal Br. 21–22, 24–25), the Examiner explains
that Cargol’s housing and chimney together provide such features (see
Answer 11–13, 15–16; see also Final Action 4).
Relatedly, the Appellant argues that Cargol fails to teach the recited
“channel” and “flow line” connected to the “flow passageway,” because the
Appellant does not regard Cargol as teaching the “flow passageway.” See
Appeal Br. 21–22. The Examiner’s determination that Cargol’s housing and
chimney together teaching the “flow passageway” resolves this issue, as
well. See Answer 12–13.
Although the Appellant argues that Roche lacks the claimed “flow
passageway” is not in “a location above said diverter” (Appeal Br. 21–22,
24), the Examiner points out that Cargol (not Roche) is relied upon for this
claimed feature. Answer 15.
The Appellant concedes that Roche teaches a “valve,” but contends
that Roche’s “valve” is not in the “diverter,” per claim 1. See Appeal Br.
22–24. Yet, the Examiner explains that elements 20 (“blowout preventer”)
and 30 (“diverter spool”) of Roche (see Roche col. 6, ll. 19–20) are together
regarded as the claimed “diverter,” such that Roche satisfies this limitation.
Answer 14.
Claim 10 is the only independent claim reciting a “ram.” The
Specification states: “the valve can includes a ram that extends in transverse
relationship to the flow passageway. The ram can be actuatable so as to
Appeal 2018-000383
Application 13/160,032

5
change the flow rate and, ultimate, to block the flow of fluid through the
flow passageway.” Spec. ¶ 25. The Appellant argues that Cargol lacks a
“ram” valve (notwithstanding that Roche, not Cargol, is cited as teaching the
“valve,” as noted above). See Appeal Br. 21. Yet, the Examiner states that
Roche’s valve is of a “ram” type. Answer 12 (citing Roche col. 8, ll. 11–15,
Figs. 1, 2 (element 22)). Indeed, Roche discloses the use of a piston to drive
element 22 (a “packing unit”) transversely, within a flowpath, so as to
obstruct fluid flow. See Roche col. 7, ll. 62–65 (“Providing a source of
pressurized hydraulic fluid beneath the piston 24 causes it to move upwardly
operably directing the annular packing unit 22 radially inwardly until it
completely closes off the vertical flow path 12.”)
The Appellant’s arguments, discussed above, do not persuade us that
the cited prior art references lack any of the claim limitations identified.
Yet, the obviousness analysis also considers the role of any objective factors
(often called “secondary” factors or considerations) in reaching a
conclusion. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In this
instance, the Appellant argues that such factors (specifically, commercial
success, industry praise, and long-felt need) require a conclusion that the
claims are not obviousness. Appeal Br. 25 (citing Lugo Decl. of Feb. 18,
2014). However, no such evidence may be sufficient, unless a nexus is
shown to exist, whereby the asserted benefits would be associated with the
subject matter of the claims. See In re Huang, 100 F.3d 135, 140 (Fed. Cir.
1996). In the present case, notwithstanding any assessment of the
sufficiency of the evidence provided, the Appellant does not adequately
establish that the cited Lugo Declaration relates to subject matter presently
claimed. See Answer 16. The Appellant has not documented a relationship
Appeal 2018-000383
Application 13/160,032

6
between the products discussed in the Lugo Declaration and the claims in
this Appeal. For instance, the claims had been amended twice (September
24, 2014 and June 29, 2015) after the Lugo Declaration was signed
(February 18, 2014). Appeal Br. 16. The Appellant has not shown that the
statements in the earlier Lugo Declaration relate to these subsequently
amended claims.
In view of the foregoing analysis, the Appellant does not persuade us
of error in the rejection of claim 1, such that we sustain the rejections of
claims 1–4, 6–16, and 18–20 under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7, 10,
11, 13, 14,
20
103(a) Cargol, Roche 1–4, 7, 10,
11, 13, 14,
20

6, 7, 12, 15,
16
103(a) Cargol, Roche,
Donald ’067
6, 7, 12,
15, 16

8 103(a) Cargol, Roche,
Bourgoyne
8
9, 19 103(a) Cargol, Roche,
Donald ’941
9, 19
18 103(a) Cargol, Roche,
Adams
18
Overall Outcome 1–4, 6–16,
18–20

Appeal 2018-000383
Application 13/160,032

7
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED