Application of Mott

• Decision Date: 12 August 1976
• Docket Number: Patent Appeal No. 76-568.
• Citation: 539 F.2d 1291
• Parties: Application of James D. MOTT.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

539 F.2d 1291

Application of James D. MOTT.

Patent Appeal No. 76-568.

United States Court of Customs and Patent Appeals.

August 12, 1976.

John H. Dodge, II, Pravel & Wilson, Charles W. Hanor, Houston, Tex., attorneys of record, for appellant, James B. Gambrell, New York City, of counsel.

Joseph F. Nakamura, Washington, D.C., for Commissioner of Patents, John W. DeWhirst, Washington, D.C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office (PTO) Board of Appeals (board) affirming the rejection of claims 39, 42, 44, 46, 50, and 57 of appellant's application serial No. 256,194, filed May 23, 1972,¹ entitled "Pressure Operated Safety Valve with Lock Means." Other claims have been allowed. We affirm in part and reverse in part.

The Invention

Appellant describes the general nature of his invention in his brief:

This invention relates to a control fluid pressure responsive safety valve for use in hydrocarbon producing wells to preclude hydrocarbons escaping from the well and polluting the surrounding environment in the event of damage to the well head by shutting in the production tubing below the well head. * * * Despite the apparent complexity of the patent drawings, the essence of valve operation is the reciprocating movement of an operator sleeve that is normally biased upwardly to effect valve closure and which is shifted downwardly by application of increased control fluid pressure to open the valve.

We need reproduce only claims 42, 44, and 46, and the rejected (but unappealed) claims from which they depend, in light of the rejections below:

40. A well flow conductor value including:

a housing having means for connecting it in flow communication with a well flow conductor;

valve means disposed in the housing and movable therein between open and closed positions for controlling flow through the housing;

operating means in said housing movable longitudinally thereof for actuating said valve to move the same between open and closed positions;

locking means in the housing initially in an inoperative position spaced from said operating means and movable to a position engaging said valve operating means to positively lock said valve operating means in position holding said valve in open position.

42. A valve of the character set forth in claim 40, wherein:

said locking means is releasably held in position locking said valve operating means in position holding the valve open, and is releasable from engagement with said valve actuating means for movement to said initial inoperative position to permit the valve to resume operation.

43. A valve of the character set forth in claim 40 including:

fluid pressure responsive means on said operating means;

means for conducting control fluid pressure to said valve housing for acting on said fluid pressure responsive means to control movement of said operating means in response to such control fluid pressure; and

means at the surface for controlling control fluid pressure conducted through said control fluid conductor means to the valve in response to predetermined conditions.

44. A valve of the character set forth in claim 43 including:

second fluid pressure conductor means communicating with the valve housing to act on said operating means in a direction opposite the control fluid pressure from said first control fluid conductor means,

said two conductor means for control fluid providing means for counterbalancing the hydrostatic pressure of the control fluids in such conductor means from the surface to the valve housing to reduce the effect of such hydrostatic pressure on the valve operator means.

45. A method of operating a well including:

installing a flow conductor in said well for conducting fluids from a producing formation therein to the surface;

controlling flow through said flow conductor by a valve in said flow conductor controlled by control fluid from the surface in response to predetermined conditions of flow through the flow conductor and at the well surface;

moving said valve to open position independently of said control fluid from the surface;

locking said valve in such open position for performing well servicing operations through the open valve.

46. A method as set forth in claim 45 including:

providing a supplemental valve for control of fluid flow through the first valve while said first valve is held in the open position.

Background

The application on appeal is related to another application by appellant, serial No. 368,840 ('840) (not of record here), but is apparently not a parent, continuation, or continuation-in-part of that application, and it does not have the same disclosure. The '840 application contains claims copied, both verbatim and in modified form, from a patent to Taylor, No. 3,696,868, issued October 10, 1972, on an application filed December 18, 1970. These copied claims are identical to those on appeal. The '840 application has an effective filing date which is apparently subsequent to Taylor's. Although none of these matters is before us as part of the record certified by the PTO, cf. 35 U.S.C. §§ 143, 144, CCPA Rule 4.2, appellant and the solicitor base their positions on these matters as did the examiner and the board, so we shall take them as facts in this appeal.

An interference was declared between Taylor and the '840 application on one count. (No. 98,609.) The record contains papers relating to appellant's motion in the interference under Rule 231(a), 37 CFR 1.231(a),² to substitute the application here on appeal for the '840 application. No decision has yet been made on this motion, and interference has been suspended, to await resolution of this appeal. Appellant's desire to retain the copied claims in both applications until the motion to substitute is decided is the prime motivation for this appeal.

The Rejections

All the appealed claims were rejected by the examiner on the ground of same-invention type double patenting, 35 U.S.C. § 101, on the corresponding claims in the '840 application.

The examiner relied on Manual of Patent Examining Procedure § 822.01³ in his second rejection of the claims and explained in the Examiner's Answer:

Applicant has received one or more actions on each set of claims and it appears that the applications and claims have had due consideration. Applicant is placing an excessive burden on the office by continuing prosecution of numerous sets of claims and consequently the double patenting rejection should be sustained.

The board agreed and in apparent recognition of the provisional nature of the rejection indicated, pursuant to Rule 196(c), 37 CFR 1.196(c), that appellant could overcome the rejection by cancelling the corresponding claims from the '840 application.

Claims 42, 44, and 46, which are verbatim copies of Taylor's claims, were rejected under 35 U.S.C. § 112 as lacking sufficient supporting disclosure and under 35 U.S.C. § 132 for new matter (the appealed claims were put in the application by amendment). The § 112 rejections are based on the description requirement of § 112, first paragraph,⁴ as enablement and disclosure of best mode have not been questioned. The § 132 rejections are on the same basis.

On claim 42 the board found that the limitation "locking means * * * spaced from the operating means and then movable to a position engaging the operating means," is not supported in appellant's disclosure because he only discloses locking means in contact, i. e., not "spaced from," the operating sleeve of the valve when not activated by well pressure. The board held that claim 42 has to be construed in light of the disclosure in Taylor, where it originated, which shows a physical spacing between the locking means and the operating sleeve in all embodiments.

On claim 44 the examiner and the board found that the specification does not support the limitation "means at the surface for controlling control fluid pressure conducted through said control fluid conductor means to the valve in response to predetermined conditions." The board rejected appellant's contention that under In re Hawkins, 486 F.2d 569, 179 U.S.P.Q. 157 (Cust. & Pat.App.1973), he was entitled to rely on a statement in the specification referring to several U.S. patents as showing examples of "Ball-type safety valves * * * which have also been used in an attempt to provide automatic closing of wells to prevent well blowouts." The board said that these patents were cited only to show conventional ball-type safety valves and did not disclose means for controlling the fluid which acted "in response to predetermined conditions" as required by the claim. Since claim 44, like claim 42, depends from claim 40, the board also affirmed the rejection of claim 44 for the same reasons given for claim 42.

The examiner and the board found claim 46 to lack supporting disclosure for the limitation "in response to predetermined conditions of flow through the flow conductor and at the well surface," for the reason that appellant did not disclose controlling flow in response to surface conditions.

The board also entered a new ground of rejection on claims 40, 41, 43, and 45, inter alia, as anticipated by U. S. Patent No. 2,998,077, issued August 29, 1961, to Keithahn. Although these claims are not on appeal, this rejection is relevant to some of appellant's arguments concerning the § 112 and § 132 rejections.

OPINION

Double Patenting Rejection

As to this rejection, appellant argues, first, that his pending related application is not a "patent equivalent" which can properly afford the basis for a double patenting rejection and, second, that the facts of this case demonstrate "good and sufficient reason," under Rule 78(b), 37 CFR 1.78(b),⁵ for the PTO's not requiring elimination of the claims from one of his applications. As authority for the first proposition appellant relies on In re Hammell, 332 F.2d...