Appeal No. 2002-1837
Application 09/315,411
Although Figures 12 through 15 in the instant application
do, as observed by the examiner, show the sliding sleeve valve 48
to be mounted on the outside of the tubular (string) 56, neither
claim 14 nor claim 15 actually calls for the valve to be so
mounted. For the reasons expressed by the appellants (see page 3
in the reply brief), the examiner’s contention (see page 5 in the
answer) that the use in claim 15 of “on” rather than --in--
requires the sleeve to be outside the tubular string stems from
an unduly restrictive interpretation of the claim. Moreover,
even if claims 14 and 15 did actually set forth that the valve or
sliding sleeve is outside the tubular string, the examiner, in
addition to acknowledging that internal valves/sliding sleeves
are conventional, concedes (see pages 5 and 6 in the answer) in
the face of the appellants’ citation of U.S. Patent No. 4,602,684
(see pages 3 through 5 in the main brief) that external
valves/sliding sleeves also are known. Given these admissions as
to the scope of the prior art, the examiner has not cogently
explained, nor is it apparent, why the appellants’ disclosure
would not have enabled a person of ordinary skill in the art to
make and use the invention set forth in claims 14 and 15 without
undue experimentation, even if these claims required the
valve/sliding sleeve to be outside the tubular string. The
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