Annen avdeling PROTOKOLL Annen avdelings ... - Patentstyret

Annen avd. sak nr. 7592 64
Opponent also argues that the tree may be removed without removing the hanger in the
wellhead, but this is the case anyway since neither hanger is located in the tree. Further,
Opponent states that the bores of the upper body 40 and wellhead 20 are of the same diameter,
but D9 does not show the bore size through the tree that would be required to remove the
hangers.
Claims 1 and 30 each require a radial production port/passage (78) in the tree (62), i.e., a
horizontal tree, communicating with the production bore of the upper tubing hanger (64). The
production bore of the upper tubing hanger (64) in turn communicates with the production
bore of the lower tubing hanger (56) in the wellhead (50) of the patented system. The fluid
communication between these production bores requires that the upper tubing hanger (64) be
oriented with respect to the lower tubing hanger (56). Neither D9 nor D6 show an oriented
tubing hanger. D9 shows a tubing hanger 30 that is neither oriented with the tree nor disposed
within the tree. Referring to the attached annotated Figure 4 of D6, such figure shows a
tubing hanger 200 in the horizontal tree 202 suspending tubing 204 through the wellhead 206
and into the well. The tubing hanger 200 is not oriented within the tree 202 because it has an
annular gallery 208 around the tubing hanger 200 and lateral flow paths 210 communicating
between the production path 212 through tubing 204 and the gallery 208. The gallery 208
will communicate with the radial production port through the horizontal tree 202 regardless of
its orientation within horizontal tree 202. The claimed hangers (64) and (56) must be oriented
with respect to each other to permit the necessary connection of the hydraulic control lines
and electric connectors to provide dual path communication between the tree and lower tubing
hanger (56) in the wellhead (50).
Opponent responds to the lack of teachings of D9 and D6 by arguing that the person skilled in
the art would understand how to adapt and modify the teachings to achieve the claimed
invention. However, Opponent has not shown evidence from a person skilled in the art to
support its allegations.
Since Opponent states that Opponent relies primarily on the combination of D9 and D6, and
because Opponent does not discuss how D9 might be combined with D1, D2, and D6, Patent
Proprietor will not address such a combination either.
Thus for at least the reasons given above, even if D9 were to be considered prior art, D9 and
D6, viewed separately or together, do not show that the claims lack inventive step.
RESPONSE TO COMMENTS RE HANS HOPPER DECLARATION
Initially, Patent Proprietor wishes to clarify that one of the principle reasons for submitting
Mr. Hopper‟s Declaration is to show why the person skilled in the art would not combine the
teachings of the prior art as proposed by Opponent. In particular, Opponent has on many
occasions merely responded by stating that the person skilled in the art would know how to
modify the prior art to achieve the claimed invention. In many instances the features of the
art, when combined, will not perform satisfactorily or as intended, and in some cases will
violate subsea regulations.
It should be pointed out that Opponent did not provide in Opponent‟s submission of June 23 a
declaration by a person skilled in the art to rebut the statements in Mr. Hopper‟s Declaration
and Opponent has not attempted to rebut – even by attorney argument – the statements made
by Mr. Hopper in his Declaration at Paragraphs 12, 16–21, 23, 26–30, 45–48, 54, 56–58, and
60–63. Such statements thus must stand uncontroverted to the extent not addressed by Mr.
Herland in his Declaration of December 7, 2007. Opponent continues to make attorney
arguments as to what is known by the person skilled in the art without supporting evidence, as
distinguished by Patent Proprietor who has attempted to provide evidence as to the knowledge