Brock W. Watson et al.Download PDFPatent Trials and Appeals BoardMay 1, 20202019002569 (P.T.A.B. May. 1, 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. 15/390,941 12/27/2016 Brock W. WATSON TTS-15-11P2D1US 9846 20558 7590 05/01/2020 SMITH IP SERVICES, P.C. P.O. Box 997 Rockwall, TX 75087 EXAMINER LEFF, ANGELA MARIE DITRAN ART UNIT PAPER NUMBER 3674 NOTIFICATION DATE DELIVERY MODE 05/01/2020 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): mail@smithipservices.com sally@smithipservices.com scrawford@smithipservices.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BROCK W. WATSON, GARY P. FUNKHOUSER, and ROGER L. SCHULTZ ____________ Appeal 2019-002569 Application 15/390,941 Technology Center 3600 ____________ Before JENNIFER D. BAHR, GEORGE R. HOSKINS, and SEAN P. O’HANLON, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4 and 6–8 in this application.2 We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Thru Tubing Solutions, Inc. as the real party in interest. Appeal Br. 3. 2 Claims 5 and 9–30 are canceled. See Appeal Br. 19–20 (Claims App.). Appeal 2019-002569 Application 15/390,941 2 CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim on appeal. Claims 1, 6, and 7 recite, with our emphases added: 1. A fibrous plugging device for use in a subterranean well, the device comprising: a body including fibers and a retainer material, wherein the retainer material retains a shape of the body, and wherein the fibers are treated with a release agent that repels the retainer material. 6. The fibrous plugging device of claim 1, wherein the release agent comprises a water-wetting surfactant. 7. The fibrous plugging device of claim 6, wherein the water-wetting surfactant is . . . alkyl sulfate. Appeal Br. 19–20 (Claims App.) (emphases added). REJECTIONS ON APPEAL Claims 1 and 6–8 are rejected under 35 U.S.C. § 103 as unpatentable over Davies (US 3,437,147, issued Apr. 8, 1969) and Nguyen ’9653 (US 2007/0079965 A1, published Apr. 12, 2007). Final Act. 2–3. Claims 2–4 are rejected under 35 U.S.C. § 103 as unpatentable over Davies, Nguyen ’965, and Lafferty (US 2012/0285695 A1, published Nov. 15, 2012). Final Act. 3–4. 3 We refer to this reference as Nguyen ’965 to differentiate it from another Nguyen reference involved in two related appeals, regarding which we are entering decisions contemporaneously with the present decision. See App. Nos. 15/390,976 and 15/391,014. Appeal 2019-002569 Application 15/390,941 3 OPINION A. Obviousness over Davies and Nguyen ’965 (Claims 1 and 6–8) The Examiner finds the plugging element illustrated in Davies’ Figure 3 is a device comprising, as recited in claim 1, a body (i.e., central body member 28) and fibers (i.e., tentacles 29–35). Final Act. 2; see Davies, 4:53–59. The Examiner finds Davies also discloses a retainer material (i.e., temporary jacket 40) that retains the shape of the body. Final Act. 2; see Davies, Fig. 4, 5:34–75. The Examiner finds Davies does not disclose treating tentacles 29–35 with a release agent that repels temporary jacket 40, as required by claim 1. Final Act. 2. The Examiner finds Nguyen ’965 “teaches inclusion of an alkyl sulfate surfactant when coating a ‘particle’ with an additional coating material [to] aid in dispersibility of the coating over the particulate.” Final Act. 3; Ans. 5 (citing Nguyen ’965 ¶ 27). The Examiner determines it would have been obvious to treat Davies’ tentacles 29–35 with an alkyl sulfate, “to aid in dispersibility of temporary jacket 40 over the tentacles.” Final Act. 3; Ans. 5. The Examiner concludes this would lead to the invention of claim 1, because Appellant’s claim 7 and Specification indicate an alkyl sulfate surfactant is a suitable release agent for use with a retainer made of paraffin wax or polyvinyl alcohol such as Davies’ temporary jacket 40. Final Act. 3 (“it has been held ‘Products of identical chemical composition cannot have mutually exclusive properties’”), 5–6; Ans. 4–8 (citing Spec. 19:18–28); Davies, 5:65–72. We agree with Appellant’s argument that the Examiner’s proposed modification of Davies in light of Nguyen ’965 lacks a rational underpinning. See, e.g., Reply Br. 16–19; In re Kahn, 441 F.3d 977, 988 Appeal 2019-002569 Application 15/390,941 4 (Fed. Cir. 2006) (Examiner bears burden to provide a rational underpinning sufficient to support legal conclusion of obviousness), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, we conclude the rejection includes two fatal shortcomings. First, we are unable to discern a rational relationship between the respective disclosures of Davies and Nguyen ’965 that would cause a person of ordinary skill in the art to conclude that treating Davies’ tentacles 29–35 with alkyl sulfate would aid in the dispersibility of jacket 40 over the tentacles. Davies discloses that tentacles 29–35 are made of nylon or rubber,4 and jacket 40 is made of polyvinyl alcohol or paraffin wax. See Davies, Figs. 2 & 4, 4:4–26, 4:53–56, 5:58–72. Nguyen ’965 discloses that particulates may be covered with a hydrophobic coating agent. See Nguyen ’965 ¶ 18. Nguyen ’965 discloses many different particulates (id. ¶ 16) and many different hydrophobic coating agents (id. ¶¶ 19–25). Nguyen ’965 further discloses that “a surfactant may be included in the hydrophobic coating agent so as to improve the coating process,” and “suitable surfactants may comprise long-chain alkyl sulfates.” Id. ¶¶ 19, 26, 28. Specifically, the alkyl sulfate surfactant “enhances the coating of the hydrophobic coating agent onto the 4 The Examiner finds Davies “fails to disclose the material from which the body [28] or fibers [29–35] are made.” Final Act. 3–4 (citing Davies, 3:63–4:2). We disagree, because we find a person of ordinary skill in the art would understand that the materials disclosed for Figure 2 (Davies, 4:4–26) could also be used for Figure 3 (id. at 4:53–56). Even if we were to agree with the Examiner’s finding, however, we would still determine there is no rational relationship between Davies and Nguyen ’965 to support the Examiner’s determination of obviousness, for substantially the same reasons articulated in this decision. Appeal 2019-002569 Application 15/390,941 5 surface of the particulates,” because it “aid[s] in the dispersibility of the hydrophobic coating agent so as to increase the portion of particulates thereby coated and so as to enhance the ability of the hydrophobic coating agent to adhere to the surface of the particulates.” Id. ¶ 27. We are unable to discern, and the Examiner does not explain, a rational relationship between Davies’ coating of polyvinyl alcohol or paraffin wax on to nylon or rubber, and Nguyen ’965’s coating of a hydrophobic agent on to particulates, that would suggest adding alkyl sulfate to Davies’ nylon or rubber would aid in dispersing polyvinyl alcohol or paraffin wax on the nylon or rubber. As the Examiner notes, alkyl sulfate may interact with different chemicals in different ways, “due to the nature of each chemical and the properties thereof.” Ans. 7. Nguyen ’965 does not appear to disclose the coated particles being made of nylon or rubber (or a suitably similar material), or the coating being made of polyvinyl alcohol or paraffin wax (or a suitably similar material). Thus, we determine there is no rational basis for the Examiner’s determination that it would have been obvious to treat Davies’ nylon or rubber tentacles 29–35 with an alkyl sulfate to aid in dispersing Davies’ polyvinyl alcohol or paraffin wax jacket 40 on to the tentacles. Second, even if there were a rational basis for adding alkyl sulfate between Davies’ tentacles 29–35 and jacket 40 to aid in dispersibility of the latter over the former, the Examiner has not explained why the alkyl sulfate would be added to the substrate tentacles (as is required by claim 1) rather than the jacket coating. Nguyen ’965 discloses including alkyl sulfate in a coating to aid in dispersibility of the coating over a substrate. See Nguyen ’965 ¶¶ 18–19, 26–28. Nguyen ’965 does not, however, explain the Appeal 2019-002569 Application 15/390,941 6 underlying chemistry for how the alkyl sulfate achieves this beneficial result. Id. ¶ 27. It is not clear to us, and the Examiner does not explain, why adding alkyl sulfate to the substrate rather than the coating would achieve the same beneficial result. In particular, the evidence of record indicates that alkyl sulfate “repels wax,” which “may be useful for releasing the wax from the fibrous material” treated with alkyl sulfate. Spec. 30:11–25 (emphases added). This interaction would seem to be a hindrance to overcome, rather than a beneficial aid in support, when applying a coat of wax on to tentacles treated with alkyl sulfate. For the foregoing reasons, we do not sustain the rejection of claim 1 as having been obvious over Davies and Nguyen ’965. The Examiner’s additional consideration of claims 6–8 does not cure the foregoing deficiencies as to claim 1 (Final Act. 2–3), so we also do not sustain the rejection as to those claims. B. Obviousness over Davies, Nguyen ’965, and Lafferty (Claims 2–4) The Examiner’s additional consideration of claims 2–4, and of Lafferty, does not cure the foregoing deficiencies of Davies and Nguyen ’965 as to claim 1. See Final Act. 3–4. Therefore, for the reasons provided above, we do not sustain the rejection of claims 2–4 as having been obvious over Davies, Nguyen ’965, and Lafferty. CONCLUSION In summary, we do not sustain the Examiner’s rejections, as summarized in this table: Appeal 2019-002569 Application 15/390,941 7 Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 6–8 103 Davies, Nguyen ’965 1, 6–8 2–4 103 Davies, Nguyen ’965, Lafferty 2–4 Overall Outcome 1–4, 6–8 REVERSED Copy with citationCopy as parenthetical citation