UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES. Ex parte GRIGORY L. ARAUZ and STEVEN E.

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2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte GRIGORY L. ARAUZ and STEVEN E. BUCHANAN Appeal Technology Center 3600 Before: MICHAEL W. O NEILL, CHARLES N. GREENHUT, and WILLIAM V. SAINDON, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL

3 STATEMENT OF CASE Appellants appeal under 35 U.S.C. 134 from a rejection of claims We have jurisdiction under 35 U.S.C. 6(b). We affirm. The claims are directed to a system for pumping fluids from a wellbore. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for pumping fluids from a wellbore, comprising: a motor having a motor shaft rotated by the motor around an axis, the motor shaft coupled to a least one driving magnet; an expansion chamber in communication with the motor, the expansion chamber adapted to substantially equalize the internal pressure of the motor with the external pressure of the wellbore; and a pump having a pump shaft coupled to a least one driven magnet, wherein the pump is operated by rotation of the motor shaft and the at least one driving magnet to cause rotation of the at least one driven magnet and the pump shaft. REJECTIONS Claims 1, 2, 5-11 and are rejected under 35 U.S.C. 103(a) as being unpatentable over Chabot (FR 2,509,804 pub. Jan 21, 1983), Janvier (FR 2,480,360 pub. Oct. 16, 1981) and Andrews (US 6,379,127 B1 iss. Apr. 30, 2002) or Bookout (US 4,487,299 iss. Dec. 11, 1984). Ans. 3. Claims 3, 4 and are rejected under 35 U.S.C. 103(a) as being unpatentable over Chabot, Janvier, Andrews or Bookout and Hannig (DE 4,214,848 pub. Nov. 11, 1993). Ans. 5. 2

4 OPINION Appellants argue claims 1, 2, 5-11 and as a group. App. Br We select claim 1 as representative, and claims 2, 5-11 and stand or fall with claim 1. See 37 C.F.R (c)(1)(vii). Appellants arguments concerning claims 3, 4 and are based only upon dependency. Thus, our resolution of the issues raised concerning claim 1 will be dispositive regarding the issues raised concerning claims 3, 4 and The basic facts of this case are not in dispute. We adopt as our own Appellants Statement of Facts, paragraphs a) through e). App. Br The Examiner relies on Chabot to disclose the basic structure claimed. Ans. 3. Chabot states that the motor s 22 rotor is not shown and the Examiner cites Janvier as demonstrating it was known in the art that motors typically rotate output shafts. Id. Appellants do not contest this finding. Appellants contend that the Examiner s proposed combination of Chabot pump s with the expansion chambers discussed in Andrews or Bookout is improper because Chabot does not demonstrate a need for an expansion chamber (App. Br. 9-10; Reply Br. 8-9). Appellants further contend that both Andrews and Bookout teach away from the use of such structures in dirty environments (App. Br ; Reply Br ). These arguments are not persuasive. The Examiner s reason for modifying the structure disclosed in a reference, for example Chabot s pump, need not stem from the reference itself. It is well-settled that a determination of obviousness does not require the claimed invention to be expressly suggested by any one reference. See, e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981). Further, nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 3

5 Chabot recognizes the desirability of hermetically sealing a submerged motor 22 driving a well pump 26 in order to isolate the motor from the fluid 10 in the well 12, which, in Chabot s case, is water. Chabot 10-11, figs. 1, 2. By using a magnetic coupling 31, Chabot achieves this isolation by using a static, or stationary, seal comprising a series of flanges and O-rings, as opposed to a dynamic or moving seal. Id. As Appellants point out, Chabot does not discuss any problems associated with the sealing structure being compromised due to pressure differential across the motor s hermetic seal. App. Br. 9. However, both Andrews and Bookout demonstrate that this problem and various solutions were known in the art. Andrews, col. 1, ll ; Bookout, col. 1, ll Andrews specifically discusses submersion depth in water as one cause. Andrews, col. 1, ll In light of these teachings, Andrews and Bookout clearly show a reason for making the proposed modification to Chabot: such a modification would accommodate a pressure differential across the seal of a submerged motor that could arise, for example, due to the submersion depth of the motor. Turning to Appellants teaching away argument, whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). Andrews states that, [p]ast submersible designs have used some form of flexible device to keep the internal environment separate from but in communication with the external fluid so as to maintain a balance of pressure on the mechanical seals. These devices have taken the form of pistons, bellows, and bladders.... All of these devices, although appropriate for clean environments, are unsuitable for operation in environments laden with grease, sludge, or solids that tend to defeat their movement ability. Col. 2, ll. 1-9; see also App. Br. 6. Bookout states that, 4

6 [w]hile known protectors have proven to be serviceable and reliable for most submergible motor applications, they have certain weaknesses, generally arising from harsh well environments, to which the known devices are not well suited. Col. 1, ll ; App. Br. 7. First, as the Examiner points out, in order to teach away the prior art must teach away from the claimed invention. See, e.g., In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); In re Harris, 409 F.3d at The premise of Appellants teaching away argument is that one of ordinary skill in the art would not be inclined to use the devices discussed in the Background of the Invention sections of Andrews and Bookout in dirty environments that may have grease, sludge or solids, or for operation in harsh well environments. App. Br. 10. Appellants conclude that such devices are therefore unsuitable for wellbore environments. App. Br. 11. Appellants reasoning presumes that a wellbore, as recited in claim 1, is inherently the type of dirty or harsh environment contemplated by Andrews and Bookout. See App. Br. 11; Reply Br. 11. However, there is no reason to interpret wellbore as restricted to such an environment. Appellants consistently refer to fluids contained in the wellbore throughout the Specification, with one example of such a fluid being petroleum. See, e.g., Spec esp. 4. We will not import limitations from the Specification into the claims which have no express basis in the claim. In re Prater, 415 F.2d 1393, (CCPA 1969). Thus, we agree with the Examiner that if the motor and pump were operated in a relatively clean environment, such as the water well described by Chabot, the portions of Andrews and Bookout cited by Appellants and quoted above would not discourage incorporation of the types of pressure equalization structures discussed. See Ans. 7. 5

7 Second, [a] known or obvious device does not become patentable simply because it has been described as somewhat inferior to some other device for the same use. In re Gurley, 27 F.3d at 553. A prior art reference must be considered in its entirety, i.e., as a whole, when determining if it would lead one of ordinary skill in the art away from the claimed invention. W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). Although Andrews and Bookout discuss the drawbacks of prior art devices having various types of expansion chambers such as those used with pistons, bellows, bladders, and diaphragms, neither Andrews nor Bookout attribute those perceived drawbacks to those types of expansion chambers themselves. In fact, both Andrews and Bookout make use of such chambers in their inventive designs. See, e.g., Andrews, col. 6, ll , fig. 2 (using a commercially available pressure reservoir having a diaphragm/bladder); Bookout, col. 4, l. 61 col. 5, l. 36, fig. 2 (using a piston-cylinder arrangement). Furthermore, Bookout notes such devices have proven to be serviceable and reliable for most submergible motor applications. Bookout, col. 1, ll (emphasis added). Thus, we cannot agree with Appellants that when reading Andrews and Bookout as a whole one of ordinary skill in the art would be led away from, or see the need to abandon, expansion chambers per se. We note that for the first time, at the end of the Reply Brief, Appellants point to claim 16 which involves a hydrocarbon well. Reply Br Arguably, the introduction of the term hydrocarbon could alter the first portion of our analysis regarding teaching away, if the term were interpreted to preclude a clean wellbore. However, it would not affect the 1 We note that Appellants appear, likewise, to allege that claim 2 requires a dirty environment, but nothing in claim 2 precludes a clean wellbore. 6

8 second portion of our analysis. Accordingly, with respect to claim 16, we find that Andrews and Bookout do not teach away from the claimed invention for the reasons set forth in the second portion of our analysis above. DECISION The Examiner s rejection of claims 1-20 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R (a). See 37 C.F.R (a)(1)(iv). AFFIRMED nlk 7