Vallourec Oil and Gas France et al.Download PDFPatent Trials and Appeals BoardJul 10, 202014587899 - (D) (P.T.A.B. Jul. 10, 2020) Copy Citation 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. 14/587,899 12/31/2014 Jean-Guillaume BESSE 419745US41X 9529 22850 7590 07/10/2020 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER LAWSON, STACY N ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 07/10/2020 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEAN-GUILLAUME BESSE Appeal 2020-000192 Application 14/587,899 Technology Center 3600 Before JENNIFER D. BAHR, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. BAHR, 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, 2, 4–7, and 9–20, which are all of the pending claims. 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(a). Appellant identifies the real parties in interest as Vallourec Oil and Gas France and Nippon Steel & Sumitomo Metal Corporation. Appeal Br. 1. Appeal 2020-000192 Application 14/587,899 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to “a threaded tubular connection comprising a male tubular element comprising a male threading and female tubular element comprising a female threading which cooperates by makeup with said male threading.” Spec. ¶ 2. Claim 1, reproduced below, is the only independent claim and is representative of the claimed subject matter. 1. A threaded connection comprising: a first and a second tubular component, with a respective male and female end, the male end including, on an external peripheral surface, at least one threaded zone and finishing in a terminal surface oriented radially with respect to an axis of the connection, the female end including, on an internal peripheral surface, at least one threaded zone and finishing in a terminal surface oriented radially with respect to the axis of the connection, wherein a width of the teeth of the male threaded zone, CWTp, increases from a value CWTpmin of a width of a tooth closest to the terminal surface of the male end to a value CWTpmax of a width of a tooth furthest from the terminal surface of the male end, and a width of valleys of the male threaded zone, CWRp, increases from a value CWRpmin of a width of a valley furthest from the terminal surface of the male end to a value CWRpmax of a width of a valley closest to said terminal surface, wherein a width of the teeth of the female threaded zone, CWTb, decreases from a value CWTbmax of a width of a tooth furthest from the terminal surface of the female end to a value CWTbmin of a width of a tooth closest to the terminal surface of the female end (8), and a width of valleys of the female threaded zone, CWRb, decreases from a value CWRbmax of a width of a valley closest to the terminal surface of the female end to a value CWRbmin of a width of a valley furthest from the terminal surface, and wherein at least one portion of the at least one threaded zone on the male end, and at least one portion of the at least one Appeal 2020-000192 Application 14/587,899 3 threaded zone on the female end cooperate in accordance with self-locking make-up, with CWT𝑝𝑝min CWT𝑏𝑏max ≥ 0.2, CWT𝑏𝑏min CWT𝑝𝑝max ≤ CWT𝑝𝑝min CWT𝑏𝑏max , CWRpmax ≤ 3 CWRpmin, and CWRbmax ≤ 3 CWRbmin, wherein at make-up at least the male threading tooth closest to the terminal surface is located in a run-out groove provided on the female end, and wherein the terminal surface of the male end does not abut the second tubular component and the terminal surface of the female end does not abut the first tubular component. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date DeLange US 6,609,735 B1 Aug. 6, 2003 Sugino US 2005/0248153 A1 Nov. 10, 2005 Martin US 2011/0278838 Al Nov. 17, 2011 REJECTIONS Claim 9 stands rejected under 35 U.S.C. § 112(b) as indefinite. Claims 1, 2, 4–7, and 10–20 stand rejected under 35 U.S.C. § 103 as unpatentable over Martin and Sugino. Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over Martin, Sugino, and DeLange. Appeal 2020-000192 Application 14/587,899 4 OPINION Indefiniteness The Examiner rejected claim 9 under 35 U.S.C. § 112(b) as indefinite because, according to the Examiner, it was unclear whether “a male threading tooth furthest from the terminal surface of the male end” in claim 9 is the same as or different than the “tooth furthest from the terminal surface of the male end” recited in claim 1. Final Act. 4–5. Subsequent to the Final Action, Appellant amended claim 9 to change “a male threading tooth” to “the male threading tooth.” Amendment submitted Sept. 7, 2018. The Examiner entered the claim amendment, but did not withdraw the rejection under 35 U.S.C. § 112(b).2 See Advisory Act.; Ans. 3 (stating that every ground of rejection set forth in the Final Action is being maintained except for those indicated as having been withdrawn, and not listing any grounds of rejection as withdrawn). Appellant does not present any arguments contesting the indefiniteness rejection. Thus, we summarily sustain the rejection of claim 9 under 35 U.S.C. § 112(b). See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal); Manual of Patent Examining Procedure (MPEP) 2 The amendment changing “a” to “the” indicates that the “male threading tooth furthest from the terminal surface of the male end” in claim 9 refers back to a tooth already recited in claim 1. However, the recitation in claim 9 of “a male threading tooth furthest from the terminal surface of the male end” does not precisely match up with the recitation in claim 1 of “a male tooth furthest from the terminal surface of the male end” because of the presence of the term “threading” in claim 9. Thus, the recitation in claim 1 does not provide as precise an antecedent basis as is reasonably possible. Appeal 2020-000192 Application 14/587,899 5 § 1205.02 (9th ed. rev. 08.2017 Jan. 2018) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). Obviousness—Martin and Sugino Appellant does not present any separate arguments for dependent claims 2, 4–7, or 10–20, aside from their dependence from claim 1. Appeal Br. 8. Thus, we decide the appeal of this rejection on the basis of claim 1, and claims 2, 4–7, and 10–20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a single claim to decide the appeal as to a single ground of rejection of a group of claims argued together). The Examiner finds that “Martin does not explicitly disclose that at make-up at least the male threading tooth closest to the terminal surface is located in a run-out groove provided on the female end.” Final Act. 7. However, the Examiner determines it would have been obvious “to add a run-out groove as taught by Sugino to the female end of Martin” to “provide the expected benefit of preventing portions of the threads near the sealing surfaces of the male and female ends from engaging with each other . . . , thus avoiding undesirably reducing the interference between the sealing surfaces.” Id. Appellant does not specifically contest the Examiner’s findings or reasoning with respect to this proposed modification. The Examiner also finds that Martin further discloses a relationship between CWRpmax and CWRpmin and between CWRbmax and CWRbmin that appears identical to Applicant’s disclosed relationship between Appeal 2020-000192 Application 14/587,899 6 CWRpmax and CWRpmin and between CWRbmax and CWRbmin (e.g. Fig.[]s 5 and 6 which are nearly identical to Applicant’s Fig.[]s 7 and 8) however Martin does not explicitly disclose that CWRpmax ≤3 CWRpmin and CWRbmax ≤ 3 CWRbmin. Final Act. 6. The Examiner finds that both of these ratios are result effective variables because, according to the Examiner, a larger difference would result in a longer required threaded zone and/or a very small minimum valley that would require a very small minimum tooth which would be susceptible to breakage, and a smaller difference would result in a shorter required threaded zone and/or a greater torque required during mating. Id. Thus, the Examiner considers the claimed ratios to have been the obvious result of routine optimization. Id. at 6–7. Where the general conditions of a claim are disclosed in the prior art, and the optimized variable is a result effective variable, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012). See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (stating that “discovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.”). The Examiner also finds that “Appellant has not disclosed that [these ranges provide] an advantage, [are] used for a particular purpose, or [solve] a stated problem and it appears that similar ranges would work equally well.” Final Act. 6–7. As stated by our reviewing court, The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that in such a situation, the applicant must Appeal 2020-000192 Application 14/587,899 7 show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citations omitted). A claim feature that provides no novel or unexpected result is generally considered to be “an obvious matter of design choice within the skill of the art.” In re Kuhle, 526 F.2d 553, 555 (CCPA 1975); see In re Chu, 66 F.3d 292, 298–99 (Fed. Cir. 1995) (holding that placement of catalyst within a bag retainer is not merely “design choice” when it overcomes a specific problem and the applicant(s) provided evidence of the benefits of such placement, and distinguishing prior cases in which design choice was properly relied upon because applicants “failed to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results”). The Examiner acknowledges that “Martin does not explicitly disclose optimizing the valley widths per se,” but finds that “such optimization would flow from the disclosure of optimizing the tooth widths.” Final Act. 2. Appellant argues that torque required for make-up does not depend on the minimum and maximum valley widths of male and female ends, and that “a valley width is determined without any impact on the length of the threaded zone.” Appeal Br. 6 (emphasis omitted). Appellant also argues that Martin’s improvement involves “modifying the male threaded zone when the width of the roots of the male threaded zone reaches a threshold value,” which is at least 0.7 times the tooth height. Id. at 7. Thus, according to Appellant, Martin focuses only on the minimum values and “is totally silent about the maximum values and how to optimize them.” Id. Appeal 2020-000192 Application 14/587,899 8 Appellant submits that, “[a]t best, the valley width may be determined in Martin,” but Martin provides “no teaching regarding optimization of the valley widths.” Appeal Br. 7 (underlining and emphasis omitted). According to Appellant, Martin fails to disclose how to optimize the value of the smallest valley width in the male member because the smallest valleys are not in interference fit with the smallest teeth of the female member. Id. Appellant contends that Martin teaches away from determining the minimum valley width of the male member as a function of the maximum valley width because the minimum valley width must be above a threshold determined based on the tooth height. Id. Martin discloses that the threaded zones “are of a known ‘self- locking’ type” having “a progressive variation of the axial width of the threads and/or the intervals between the threads[] such that a progressive axial tightening is produced during make-up until a final locking position.” Martin ¶ 38. “[T]he narrowest teeth of the male and female threaded zones are respectively clamped between the corresponding teeth which are the widest,” which places the narrowest teeth near the terminal surfaces of the male and female ends at risk of deterioration by shear. Id. ¶ 43. The risk of shear to the narrowest female teeth is reduced by providing “imperfect” corresponding male teeth of reduced height. Id. ¶¶ 44–45. In order to reduce the risk of shear to the narrowest male teeth, Martin’s improvement is to increase the ratio between the minimum male tooth width and the maximum female tooth width to make these tooth widths less disproportionate (i.e., more equilibrated) to one another. Martin ¶ 46 (disclosing making this ratio greater than or equal to 0.2). However, in order to preserve the total length of the threaded zones of the prior art to maintain Appeal 2020-000192 Application 14/587,899 9 the make-up torque, there is a limit to how much the minimum male tooth width and the maximum female tooth width can be equalized because the minimum male root width closer to the terminal surface of the female end cannot be reduced to a level below a threshold value, which is 0.7 or more times the tooth height. Id. ¶¶ 48–50. Further, Martin discloses that, in order to radially tighten the threaded zones, the width of the narrowest tooth of the male threaded zone is equal to the width of the narrowest root of the female threaded zone. Id. ¶ 42. To balance the two objectives of reducing the disproportionality of widths of the widest female tooth and the narrowest male tooth, and correspondingly the widths of the widest male root and the narrowest female root, to reduce risk of shear, and preserving the total length of the threaded zones of the prior art, Martin discloses that the ratio of these two widths “must be in the range of 0.3 to 0.7.” Id. ¶¶ 57–58. From the above disclosure of Martin, it is clear that the width of the widest male root (CWRpmax), closest to the terminal surface of the male end, is greater than the width of the narrowest male root (CWRpmin), which must be at least equal to a threshold value (at least 0.7 times the tooth height). In other words, the width of the widest male root (CWRpmax) is some multiple, greater than one, of the width of the narrowest male root (CWRpmin). However, this multiple is also bounded by the restriction that the width of the widest male root (CWRpmax) not be disproportionately larger than the width of the narrowest female root (CWRbmin), namely, that CWRbmin fall within a range of 0.3 to 0.7 times CWRpmax, as discussed above. Likewise, the width of the widest female root (CWRbmax), furthest from the terminal surface of the male end, is some multiple, greater than Appeal 2020-000192 Application 14/587,899 10 one, of the width of the narrowest female root (CWRbmin). Further, this ratio is bounded by the desirability of managing the degree of disparity between the width of the narrowest female tooth and the width of the widest male tooth, although accentuating this disproportionality, to conserve the total length of the prior art threaded zones as explained in paragraph 48, is far less prejudicial, for the reasons explained in paragraph 49 of Martin. See Martin ¶ 48 (setting forth the inequality between the ratio of the narrowest female tooth width to widest male tooth width and the ratio of the narrowest male tooth width to widest female tooth width). Martin may not expressly teach that the ratio between the width of the widest male root (CWRpmax), closest to the terminal surface of the male end, and the width of the narrowest male root (CWRpmin) is a result effective variable or that the ratio between the width of the widest female root (CWRbmax), furthest from the terminal surface of the male end, and the width of the narrowest female root (CWRbmin) is a result effective variable. However, by selecting width values to optimize the tooth and root widths in accordance with the aforementioned principles of Martin, one would arrive at ranges of acceptable relationships between CWRpmax and CWRpmin and between CWRbmax and CWRbmin. To the extent that the workable ranges of these relationships for satisfying Martin’s objectives might be less restrictive than those claimed, we note that Appellant does not dispute the Examiner’s findings that Appellant has not disclosed that the claimed ranges provide an advantage, are used for a particular purpose, or solve a stated problem, and that it appears that similar ranges would work equally well. See Final Act. 6–7. Thus, Appellant fails to persuade us that the claimed ranges patentably distinguish over Martin. See Woodruff, 919 F.2d at 1578. Appeal 2020-000192 Application 14/587,899 11 For the above reasons, Appellant’s arguments do not apprise us of error in the Examiner’s conclusion that the subject matter of claim 1 would have been obvious. Accordingly, we sustain the rejection of claim 1, and of claims 2, 4–7, and 10–20, which fall with claim 1, as unpatentable over Martin. Obviousness—Martin, Sugino, and DeLange In contesting the rejection of claim 9 under 35 U.S.C. § 103, Appellant relies solely on its dependence from claim 1. Appeal Br. 8. For the reasons discussed above, Appellant’s arguments fail to apprise us of error in the rejection of claim 1 and, likewise, fail to apprise us of error in the rejection of claim 9. Accordingly, we sustain the rejection of claim 9 as unpatentable over Martin, Sugino, and DeLange. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 9 112(b) Indefiniteness 9 1, 2, 4–7, 10–20 103 Martin, Sugino 1, 2, 4–7, 10–20 9 103 Martin, Sugino, DeLange 9 Overall Outcome 1, 2, 4–7, 9–20 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). Appeal 2020-000192 Application 14/587,899 12 AFFIRMED Copy with citationCopy as parenthetical citation