Phelps, Nicholas Brandon.

Patent Trials and Appeals Board

Dec 26, 2019

14790122 - (D) (P.T.A.B. Dec. 26, 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.
14/790,122 07/02/2015 Nicholas Brandon Phelps SSV4-58912-US-NP 2119
44639 7590 12/26/2019
CANTOR COLBURN LLP-BAKER HUGHES, A GE COMPANY, LLC
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
HICKS, ANGELISA
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS BRANDON PHELPS
Appeal 2019-003177
Application 14/790,122
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
HORNER, 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 to reject claims 1‒18. We have jurisdiction under
35 U.S.C. § 6(b).
The Examiner rejected the claims on appeal as unpatentable over
various combinations of the prior art. Appellant argues that the combined
teachings of the prior art would not have led one having ordinary skill in the

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Baker Hughes, a
GE company, LLC. Appeal Br. 2.
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art to the claimed subject matter. For the reasons explained below, we agree
with Appellant that the Examiner has failed to provide adequate support for
the determination of unpatentability of claims 1‒18. Thus, we reverse.
CLAIMED SUBJECT MATTER
The claims are directed to an electrically actuated safety valve, a
method for operating a safety valve, and an electric actuation system. Spec.
¶¶ 4‒6. Claims 1, 10, and 12 are independent. Claim 1 is illustrative of the
subject matter on appeal and is reproduced below.
1. An electrically actuated safety valve comprising:
a flapper;
a flow tube in operable communication with the flapper;
an electric actuation system including a rotationally fixed
and axially translatable shaft and an electric holding
configuration mounted to and translatable with the shaft, the
electric holding configuration selectively connecting a prime
mover to the flow tube.
Appeal Br. 19 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Cypher US 2,202,192 May 28, 1940
Hopper US 5,070,944 Dec. 10, 1991
Nicholson US 5,187,993 Feb. 23, 1993
Rawson US 6,253,843 B1 July 3, 2001
Sundar US 2008/0091103 A1 Apr. 17, 2008
Scott US 8,464,799 B2 June 18, 2013
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REJECTIONS
The following rejections under 35 U.S.C. § 1032 are on appeal:
1. Claims 1, 2, and 4‒9 are rejected as unpatentable over Rawson and
Nicholson.
2. Claims 10, 12, and 17 are rejected as unpatentable over Scott and
Nicholson.
3. Claims 1‒3, 9, and 11 are rejected as unpatentable over Hopper
and Nicholson.
4. Claims 13‒15 are rejected as unpatentable over Scott, Nicholson,
and Hopper.
5. Claim 16 is rejected as unpatentable over Scott, Nicholson, and
Sundar.
6. Claim 18 is rejected as unpatentable over Scott, Nicholson, and
Cypher.
OPINION
Rejection of claims 1, 2, and 4‒9 over Rawson and Nicholson
In the rejection of independent claim 1, the Examiner found that
Rawson teaches an electric actuation system including a shaft (motor shaft
292) and an electric holding configuration (solenoid 254) “mounted to and
translatable with the shaft.” Final Act. 4. The Examiner found that Rawson
does not disclose an electric actuation system including a rotationally fixed

2 The Examiner stated the second and third grounds of rejection as being
based on anticipation under 35 U.S.C. § 102(b) but based each rejection on a
combination of two prior art references. Final Act. 5‒8. Appellant properly
understood these grounds of rejection to be based on obviousness under
35 U.S.C. § 103. Appeal Br. 11‒15.
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and axially translatable shaft. Id. The Examiner found that Nicholson
teaches an electric actuation system (10) including a rotationally fixed and
axially translatable shaft (11), and determined that it would have been
obvious “to modify the electric actuation system of Rawson . . . with a
rotationally fixed and axially translatable shaft as taught by Nicholson . . . in
order to allow the shaft to be in a neutral position.” Id.
Appellant argues that the Examiner’s articulated reason for the
combination is “unclear” and amounts to “a mere conclusory statement.”
Appeal Br. 10. We agree with Appellant. For the reasons that follow, we
find that the Examiner failed to provide adequate reasoning to explain the
proposed modification to Rawson’s valve system in the manner claimed.
The Examiner’s reason for modifying Rawson’s electrically actuated
safety valve with the shaft as taught in Nicholson is for a reason specific to
context in which Nicholson’s linear actuator is used, and the Examiner did
not explain adequately how that reasoning applies in the context of Rawson.
Further, the Examiner failed to address the fact that Rawson’s system
already includes a fail-safe mechanism to return the valve to a closed
position in the event of a power failure.
Specifically, Nicholson describes prior art linear actuators useful for
operating controls for devices, such as trenchers and concrete mixers, from a
remote position. Nicholson, 1:4‒37. Nicholson addresses a problem in the
art that if electrical power is suddenly terminated to such a linear actuator,
the push-pull rod or cable will stay in its operative position and continue to
operate undesirably. Id. at 1:47‒68.
Nicholson discloses linear actuator 10, which comprises reversible
rotary drive motor 20, which drives gear train 21. Nicholson, 3:28‒37; Fig.
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3. Output shaft 22 of gear train 21 is connected to rotary, ferromagnetic core
23 of electromagnet 24. Id. at 3:37‒39. Coil 25 of electromagnet 24 is
confined in housing 26, which is secured within frame cylinder 17. Id. at
3:39‒43. Magnetic head 28, which is connected to core 23, revolves as gear
train 21 revolves. Id. at 3:44‒46. When coil 25 of electromagnet 24 is
energized, armature plate 29 is drawn against armature head 28 to transmit
rotary motion from core 23 to rotary shaft 31, which is mounted on the end
of shaft 31. Id. at 3:47‒54, 60. Shaft 31 has helical screw 32, which is
confined with tubular portion 11.1 of push-pull rod 11. Id. at 3:63‒4:1.
Tubular portion 11.1 of push-pull rod 11 is affixed to and driven by movable
carriage 35, which includes threaded nut 36, which is engaged with helical
screw 32 of shaft 31. Nicholson, 4:6‒14. Thus, nut 36 and carriage
35 translate along shaft 31 as the shaft revolves, thereby causing the end of
rod 11 to move forward and rearwardly. Id. at 4:1‒5, 9‒10.
When coil 25 is deenergized, such as when power is no longer
supplied to the clutch and motor, armature 29 is forced by springs 30 away
from magnetic head 28 so as to isolate shaft 31 from motor 20. Id. 3:54‒59.
Once disengaged, return spring 15 will urge control lever 14 to its home
position, and cable 12 will urge rod 11 to move to a position to
accommodate movement of lever 14. Id. at 5:61‒65, Fig. 1. The movement
of rod 11 causes movement of nut 36 along helical screw 32 of shaft 31, and
shaft 31 rotates freely without being constrained by the electromagnet 24,
gear train 21, or motor 20. Id. at 5:59‒6:2. Thus, lever 14 and cable 12
move to a non-operative, neutral position, when the power supply fails. Id.
at 6:5‒8.
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Unlike Nicholson’s system, Rawson’s linear actuator is not used for
remotely operating a machine such as a trencher or a cement mixer. Rather,
Rawson’s linear actuator is designed to open a safety valve that is normally
biased to a fail-safe closed position. Rawson, 1:22‒23. The Examiner
specifically identified the embodiment of Figure 15 of Rawson in the
rejection. Final Act. 4. This embodiment of Rawson’s system includes a
fail-safe mechanism for causing the valve to revert to its closed position in
the event of a power failure. Specifically, in Rawson, solenoid 254 is in
operable communication with spring mandrel 280, so that when solenoid
254 is energized, spring mandrel 280 is urged downhole to activate ramp
202. Rawson, 9:67‒10:2. Upon de-energization of solenoid 254, spring 282
urges ramp 202 into its rest position. Id. at 10:2‒4. This movement of ramp
202 removes support for yoke halves 200a/200b, so that the yoke is moved
away from lead screw 34, and the power spring of the safety valve moves
the flow tube uphole to close the safety valve flapper. Id. at 10:11‒17.
The Examiner proposed modifying Rawson with an electric actuator
as taught by Nicholson to allow the shaft, and thus the flapper, to return to a
neutral, i.e., closed position, in the event there is a loss of power. Ans. 11.
As explained in detail above, however, Rawson’s system already includes a
fail-safe system that allows the valve to close when power failure occurs.
The Examiner has not explained adequately why Rawson would require
modification to place the shaft in a neutral position.
For these reasons, we find that the Examiner has not articulated
adequate reasoning based on rational underpinnings to explain why one
having ordinary skill in the art would have been led to modify Rawson’s
safety valve with the teachings of Nicholson in the manner recited in
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claim 1. Thus, we do not sustain the rejection of claim 1 and its dependent
claims 2 and 4‒9 under 35 U.S.C. § 103 as unpatentable over Rawson and
Nicholson.
Rejection of claims 10, 12, and 17 over Scott and Nicholson
The Examiner found that Scott discloses, with reference to
independent method claim 10, a method for operating a safety valve
comprising translating an electric holding configuration (fail safe assembly
52). Final Act. 5. With reference to claim 12, the Examiner similarly found
that Scott discloses an electric holding configuration (52) translatable with a
linear actuator (42). Id. at 6. Appellant argues that these findings are
erroneous because Scott’s fail safe assembly 52 is stationary and mounted in
a housing of a downhole tool and is not translated or translatable. Appeal
Br. 12.
We agree with Appellant that the Examiner’s finding is not supported
by Scott’s disclosure. Scott describes that fail safe assembly 52 comprises
anti-backdrive device 112 and electromagnetic clutch 114. Scott 6:10‒12.
Scott describes that these components are positioned between stepper motor
72 and gear reducer 92. Id. at 6:12‒16. Scott describes, in an alternate
arrangement, that clutch 114 may be positioned between gear reducer 92 and
ball screw assembly 94 or interposed between gear reducer sets. Id. at 6:18‒
22. In each of these arrangements, device 112 and clutch 114 are positioned
uphole of the ball screw assembly 94. Scott, Fig. 3. Ball screw assembly 94
includes ball screw 96, which rotates with output from motor 72 and gear
reducer 92, and which drives power rod 108 via drive nut 98. Id. at 5:18‒20,
33‒36, Fig. 4. Power rod 108 translates downhole to push flow tube ring 66
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downwardly. Id. Thus, Scott’s fail safe assembly 52 is located uphole of the
translatable components of its system, and thus, does not translate.
In response to Appellant’s arguments, the Examiner suggests that
Nicholson cures the deficiency in Scott. Ans. 12. Nicholson does not cure
this deficiency. As discussed above, Nicholson describes a similar
electromagnetic clutch 24 located between gear train 21 and rotary shaft 31,
such that Nicholson’s clutch likewise does not translate with push-pull
rod 11. Nicholson, Fig. 3.
For these reasons, we find that the Examiner’s rejection is not
supported by the evidence. Thus, we do not sustain the rejection of
independent claims 10 and 12 and dependent claim 17 as unpatentable over
Scott and Nicholson.
Rejection of claims 1‒3, 9, and 11 over Hopper and Nicholson
The Examiner found that Hopper discloses an electric actuation
system including a shaft (41) and an electric holding configuration (solenoid
19) mounted to and translatable with the shaft, as recited in claim 1. Final
Act. 7. Appellant argues that this finding is erroneous because Hopper’s
solenoid 19 is fixed, not translatable with rod 41, and rod 41 merely
responds to energization of solenoid 19. Appeal Br. 14.
We agree with Appellant that the Examiner’s finding is not supported
by Hopper’s disclosure. Hopper discloses an actuator for a downhole safety
valve that includes motor 15, drive gear 16, drive sleeve 17, collet lock
assembly 18, and solenoid 19. Hopper, 4:53‒56, Fig. 1. Collet lock
assembly 18 includes lock collet 38 that is fixed into split base ring 40,
which has rod 41 passing through solenoid 19. Id. at 5:32‒33, 40‒41.
Spring 42 biases rod 41, base ring 40, and lock collet 38 upwardly. Id. at
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5:41‒43. Hopper describes that “if solenoid 19 is energized in the right
direction by DC current it will pull the assembly down against spring
42 . . . .” Id. at 5:45‒47. We agree with Appellant’s reading of this
description to refer to rod 41 responding to energization of solenoid 19. The
Examiner has not pointed us to adequate disclosure in Hopper to support a
finding that solenoid 19 is translatable with rod 41.
For these reasons, we find that the Examiner’s rejection is not
supported by the evidence. Thus, we do not sustain the rejection of
independent claim 1 and dependent claims 2, 3, 9, and 11 as unpatentable
over Hopper and Nicholson.
Rejection of claims 13‒15 over Scott, Nicholson, and Hopper
The Examiner’s rejection of dependent claims 13‒15 suffers from the
same deficiencies in the findings as to the scope and content of the prior art
as discussed above. Thus, for the same reasons, we do not sustain the
rejection of claims 13‒15.
Rejection of claim 16 over Scott, Nicholson, and Sundar
The Examiner cites Sundar as support for finding that the use of a ball
screw actuator and a lead screw actuator are interchangeable. Final Act. 10.
We agree with Appellant that Sundar does not cure the deficiencies,
discussed above, in the combination of Scott and Nicholson. Appeal Br. 16.
Thus, for the same reasons, we do not sustain the rejection of claim 16.
Rejection of claim 18 over Scott, Nicholson, and Cypher
The Examiner cites Cypher for its disclosure of a linear actuator
extending through an interface member to limit the swing response of a
valve. Final Act. 11. We agree with Appellant that Cypher does not cure
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the deficiencies, discussed above, in the combination of Scott and
Nicholson. Appeal Br. 17. Thus, for the same reasons, we do not sustain
the rejection of claim 18.
CONCLUSION
We do not sustain the Examiner’s rejections under 35 U.S.C. § 103 of
claims 1‒18. Thus, we reverse the Examiner’s decision on unpatentability
of these claims.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)
/Basis
Affirmed Reversed
1, 2, 4‒9 103 Rawson,
Nicholson
1, 2, 4‒9
10, 12, 17 103 Scott,
Nicholson
10, 12, 17
1‒3, 9, 11 103 Hopper,
Nicholson
1‒3, 9, 11
13‒15 103 Scott,
Nicholson,
Hopper
13–15
16 103 Scott,
Nicholson,
Sundar
16
18 103 Scott,
Nicholson,
Cypher
18
Overall
Outcome
1‒18
REVERSED