Ex Parte 7048050 et al

Board of Patent Appeals and Interferences

Jun 29, 2011

95001113 (B.P.A.I. Jun. 29, 2011)

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.
95/001,113 11/18/2008 7048050 069669-0007-02 7896
9629 7590 06/30/2011
MORGAN LEWIS & BOCKIUS LLP (WA)
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/30/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

TESCO CORPORATION
Requester, Cross-Appellant, Respondent

v.

Patent of WEATHERFORD/LAMB, INC.
Patent Owner, Appellant, Respondent
____________________

Appeal 2010-012527
Reexamination Control 95/001,113
Patent US 7,048,050 B21
Technology Center 3900
____________________

Before ROMULO H. DELMENDO, JEFFRY B. ROBERTSON and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued May 23, 2006 to Vail, III et al. (hereinafter "'050 patent").
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Patent US 7,048,050 B2

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STATEMENT OF THE CASE
Claims 11-13, 15-22, 30, 33, 35-37, 42-46, 48 and 49 stand rejected
(Appeal Brief of Patent Owner ("ABPO") 1). Claims 1-10, 14, 31, 32, 34,
38-41 and 47 have been canceled while claims 23-29, 50 and 51 have been
found patentable (ABPO 1). The '050 patent was involved in an
infringement litigation styled Weatherford International Inc. v. Tesco
Corporation, No. 2:07-cv-531 (E.D. TEX.) (Cross-Appeal Brief of
Requester ("CABR") 2) which, according to the representative of the Patent
Owner, has been settled and dismissed (Hearing Transcript 2).
The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a), the
rejection of claims 11-13, 15-22, 30, 33, 35-37, 42-46, 48 and 49 as
discussed infra under the section heading: I. APPEAL OF THE PATENT
OWNER. In addition to the Appeal Brief, the Patent Owner also submitted
a Rebuttal Brief ("RBPO") and a Declaration. The Requester filed a
Respondent Brief with respect to the appeal of the Patent Owner. These
documents have been considered in the present appeal. An oral hearing with
the Patent Owner's representative was held before the Board of Patent
Appeals and Interferences on January 5, 2010.
The Requester cross-appeals under 35 U.S.C. §§ 134(c) and 315(b)
from the Examiner's refusal to enter proposed rejections of claims 11-13, 15-
30, 33, 35-37, 42-46 and 48-51 as discussed infra under the section heading:
II. CROSS-APPEAL OF REQUESTER. In addition to the Requester's
Appeal Brief, the Requester also submitted a Rebuttal Brief ("RBR"). The
Patent Owner filed a Respondent Brief ("Res. Br. PO") with respect to the
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cross-appeal of the Requester. These documents have been considered in
the present appeal.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We AFFIRM-IN-PART. That is, we REVERSE as to the Patent
Owner's appeal and AFFIRM as to the Requester's cross-appeal.

THE INVENTION
The '050 patent is directed to a method and apparatus for cementing
drilling strings used in oil and gas wells (Abs.). Independent claims 11 and
23, which have been amended, read as follows (ABPO, Claims App'x.):
11. (Amended) A method for drilling and lining a
wellbore with a tubular comprising:
drilling the wellbore using a drill string, the drill string
having a casing portion comprising an interior passageway;
locating the casing portion within the wellbore;
lowering a one-way valve through the interior
passageway of the casing portion after the casing portion is
located within the wellbore;
installing the one-way valve in the interior passageway of
the casing portion;
after the step of installing the one-way valve, introducing
a physically alterable bonding material into the interior
passageway of the casing portion;
placing [a]the physically alterable bonding material in an
annulus formed between the casing portion and the wellbore;
establishing [a]an ambient hydrostatic pressure condition
in the wellbore by performing the following steps: applying
pressure to the physically alterable bonding material for
substantially displacing the physically alterable bonding
material from [an interior of the tubular]the interior passageway
through the one-way valve and into the annulus and thereafter
reducing pressure from the interior passageway and allowing
the one-way valve to close; and
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allowing the bonding material to physically alter under
the ambient hydrostatic pressure condition.

23. (Amended) An apparatus for drilling and lining a
wellbore comprising:
a drill string having a casing portion for lining the
wellbore[; and], the casing portion having an interior
passageway with an annular recess;
a drilling assembly operatively connected to the drill
string and having an earth removal member and a geophysical
parameter sensing member;
a one-way valve adapted to be installed in the interior
passageway after the casing portion is in the wellbore, the one-
way valve comprising a latch for engagement with the annular
recess; and
first and second wiper plugs separate from the one-way
valve adapted to be lowered through the interior passageway of
the casing portion after the one-way valve is installed, with a
charge of physically alterable bonding material therebetween.

PRIOR ART
The prior art in the appeal record is:
Scott 3,159,219 Dec. 1, 1964
Langer 4,589,495 May 20, 1986
Dismukes 4,616,719 Oct. 14, 1986
Dismukes 4,646,856 Mar. 3, 1987
Leturno 5,197,553 Mar. 30, 1993
Dobson 5,425,423 Jun. 20, 1995
Gaines WO 82/01211 Apr. 15, 1982

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
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1. A. In describing the drill string of Figure 1, the Specification of the
'050 patent states:
The Latching Float Collar Valve Assembly 20 is pumped
downhole with drilling mud after the depth of the well is
reached. The Latching Float Collar Valve Assembly 20 is
pumped downhole with mud pressure pushing against the
Upper Seal 22 of the Latching Float Collar Valve
Assembly 20. The Latching Float Collar Valve Assembly
20 latches into place into Latch Recession 24. The Latch
26 of the Latching Float Collar Valve Assembly 20 is
shown latched into place with Latching Spring 28
pushing against Latching Mandrel 30.
(Col. 4, ll. 39-48, emphasis added; see also Fig. 1).

B. In describing the method for cementing drill strings, the
Specification of the '050 patent states:
If the cement is to be cured under ambient hydrostatic
conditions, pump down a Latching Float Collar Valve
Assembly with mud until it latches into place in the
notches provided in the Latching Sub located above the
drill bit.
(Col. 10, ll. 26-29, emphasis added).

2. A. Scott describes cementing plugs and float equipment for use in
cementing well casing in a well bore (col. 1, ll. 8-11).
B. Scott describes a problem being addressed by the disclosed
invention as follows:
In addition, the back-pressure valve seat, as well as the
valve-which has characteristically been of the ball type-
are subjected to the wearing action of the upward flow of
fluid through the assembly as the casing is being run in,
and are also subjected to the wearing effect of fluid being
circulated down through the casing string and to the
wearing effect of the well cement as it is pumped down
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through the back-pressure valve. Therefore, because of
the substantial abrasive effects of the fluids passing
through the conventional back-pressure valve, such
valves have frequently been known to be inoperative due
to wear when the pumps at the surface have been shut
down following placement of the cement, and as a
consequence pressure had to be maintained from the
surface, since otherwise the cement might be displaced
from the well due to well pressures and forced back into
the casing through the inoperative check valves.
(Col. 1, ll. 67-col. 2, l. 12).

C. As to installation of the valve relative to the casing, Scott states:
In accordance with a primary object of the present
invention, a back-pressure valve and cementing plug
combination is employed which may be characterised as
a "free valve," inasmuch as the casing may be run and
the circulation of flushing fluid therethrough proceeded
with before placing the free valve plug of the present
invention into the flow stream. Accordingly, when
needed, a back-pressure valve which will be in good
condition and therefore certain to operate, will be
available.
(Col. 2, ll. 14-21, emphasis added).

D. As to installation of the valve relative to the cement, Scott
states:
In this connection, a novel so-called "bottom cementing
plug" is provided, this bottom cementing plug being
combined with a back-pressure valve and being adapted
to be interposed in the fluid column being pumped into
the well between the flushing fluid and the well cement,
thus forming a floating barrier therebetween.
(Col. 2, ll. 21-27, emphasis added).

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E. In describing the operation of the apparatus as illustrated in
Figure 4, Scott further states:
Thus it will be seen that the plug P may be interposed in
a fluid column being pumped down the casing C between
the flushing fluid and a body of well cement 44' which is
to be placed in the well, and the plug P will constitute a
floating separator between these two different fluids. As
the plug P, interposed between the circulating fluid and
the body of cement 44' as indicated in FIG. 4, moves into
engagement with the seat 18, as shown in FIGS. 5, 6 and
8….
(Col. 5, ll. 32-47; see also Fig. 4).

F. In Scott, the plug P includes a downward extension 40 that is
received in the central opening 20 of the seat 18 (col. 5, ll. 37-
46; Fig. 6). The plug P is provided with an external channel 46
that is engaged by a split snap ring 25 received in recess 24 in
the central opening 20 of the seat 18 which locks the plug P in
engagement with the seat 18 (col. 4, ll. 54-61; col. 5, ll. 37-52;
Fig. 6). Hence, the downward extension of plug P and the snap
ring 25 that function as a latch have reduced diameters as
compared to the casing.

3. A. Langer describes an apparatus and method for inserting flow
control means into a well casing in which a check valve is
pumped down into engagement with a receptacle to regulate the
flow of fluid through the well casing (Abs.).
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B. Langer states:
Currently existing techniques that involve the use of check
valves in float shoes or float collars have certain disadvantages.
The check valve in the float shoe or float collar is frequently
damaged during the pumping of the circulating fluid through
the check valve into the wellbore. Damage to the check valve
may prevent the check valve from functioning properly and
thereby allow well fluids to enter the casing. If the check valve
is damaged it may not function properly during the cementing
process. If a damaged check valve permits the leakage of
cement back into the well casing, it will become necessary to
maintain pressure on the well for an extended period of time
during the cementing operation in order to "hold" the cement
slurry in place while it sets and hardens. This problem could be
avoided if the check valve were not in position within the well
casing until after the pumping of the circulation fluid had been
completed.
(Col. 2, ll. 26-43).

C. Langer also specifically states:
During the pumping of the circulating fluid it is beneficial to
have the largest possible bore through the float shoe or float
collar in order to have the smallest possible pressure drop
across the passage through the float shoe or float collar.
Accordingly, it is desirable to run the casing string with no
check valve in the casing and then after the casing string has
reached the required depth insert the check valve into place
within the casing before beginning the cementing process.
(Col. 2, ll. 44-52; emphasis added).

D. Langer also specifically states:
Another object of the invention is to provide an apparatus and
method for running a casing string with no check valve in order
to facilitate the running of the casing string and then inserting a
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check valve into the casing string at the desired depth before
beginning cementing operations.
(Col. 4, ll. 4-9; emphasis added).

E. The DESCRIPTION OF THE PREFERRRED EMBODIMENT
of Langer describes four2 different "check valve means"
enumerated 20, 48, 90 and 116 (Col 5, ll. 27- col. 10 ll. 19).

F. (1) Langer describes the check valve means 20 as having a
check valve 28 which "unidirectionally regulates the flow of
fluid through passageway 26 in a manner well known in the
prior art." (Col. 5, ll. 36-52; see also col. 6, ll. 27-29).
(2) Langer states:
After the cement slurry has been fully displaced from the casing
into the annulus, check valve means 20 is pumped into locking
engagement with receptacle means 22 to prevent back flow of
cement slurry into the casing.
(Col. 7, ll. 26-30).
(3) Hence, cement is introduced before installation of the check
valve means 20.

G. (1) Langer describes an optional second check valve means 48
with check valve 52 that is used in conjunction with check
valve means 20 that is placed "in the bottom of the float shoe."
(Col. 6, ll. 46-53).

2 Column 9, line 43 of Langer identifies "check valve 106" but it is evident
that this is a typographical error in that numeral 106 is identified multiple
times elsewhere in Langer as a "choke valve" which is a component of a
"choke valve means 104." (See, e.g., col. 9, ll. 30-46, col. 10, ll. 3-19).
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(2) By virtue of the position of the second check valve means
48 at the bottom of the float shoe (see Fig. 3), one would infer
that that the second check valve means 48 is installed before the
casing is located within the wellbore.

H. (1) With respect to check valve means 90 that includes check
valve 92 (col. 8, ll. 54-57), Langer states:
In operation, check valve means 90 is in place within receptacle
40 locked in groove 88 when receptacle housing 38 is run into
the well bore. The check valve means 90 in the receptacle 40 is
closed against the fluids in the well bore and prevents the entry
of the fluid into the casing while the casing string is being run.
(Col. 9, ll. 1-6).

(2) Hence, the check valve means 90 is installed before the
casing is located within the wellbore.

I. (1) With respect to check valve means 116 that includes check
valve 118 (col. 9, ll. 52-55), Langer states:
After the cement has been displaced from the casing, it is
necessary to prevent the backflow of cement slurry into the
casing until the cement slurry sets and hardens. To prevent the
back flow of cement slurry, the invention utilizes an additional
check valve means 116 shown in FIG. 14. . . . The check valve
means 116 is pumped down the casing string into locking
engagement with the groove 114 in choke valve housing 108. . .
Once it is in place, check valve means 116 keeps the cement
slurry from reentering the interior of the casing.
(Col. 9, ll. 47-63).

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(2) Hence, cement is introduced before installation of the check
valve means 116.

J. In Langer, in those implementations in which the check valve
means is pumped down the well casing, for example, check
valve means 20, the check valve housing 24 is provided with a
spring loaded latch 34 that engages a groove 46 in a receptacle
40 (see, e.g., col. 5, ll. 60-64; col. 6, ll. 24-26; Fig. 1; see also
Figs. 13, 14). Hence, the check valve housing 24, the latch 34
and the groove 46 have reduced diameters as compared to the
casing.

4. A. Dobson describes a well completion tool that includes a liner
assembly with a cementing port collar 222 having cementing
ports 224 (col. 7, ll. 6-15; Fig. 2B).
B. The tool of Dobson further includes an annular slide valve 230
positioned on the inner side of the cementing port collar 222,
the slide valve 230 having a piston section 232 (col. 7, ll. 21-
24).
C. With respect to operation of the annular slide valve 230,
Dobson states that "when pressure is developed within the liner
assembly, the slide valve 230 will move under the influence of
the differential force applied at either end" to open the closed
cementing ports 224 and allow passage of material radially
through the liner assembly (col. 7, ll. 41-59).
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D. The tool of Dobson also includes a circulating valve 250 with
control valve passages 252, and a sleeve piston 254 with a seat
256 (col. 7, ll. 62-65).
E. With respect to operation of the circulating valve 250, Dobson
states that the seat 256 of the sleeve piston 254 receives "a ball
dropped into the circulation through the drill pipe [which]
actuates the circulating valve 250 so as to expose the control
valve passages 252." (Col. 7, ll. 62-68).
F. Dobson explains that when a second ball rests on the seat 256
of the piston 254, the circulating valve 250 is actuated to
expose the controlled valve passages 252, and pressure is
presented to the annular space between rubber cups 262 and
264 (col. 8, ll. 37-45).
G. Dobson further explains that sufficient over-pressurizing of the
annular space initiates the opening of the slide valve 230 which
opens the cementing ports 224 (col. 8, ll. 45-50).

PRINCIPLES OF LAW
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The Court also noted that "[t]o facilitate review, this analysis should
be made explicit." KSR, 550 U.S. at 418, (citing In re Kahn, 441 F.3d 977,
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988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness")). In this regard, "patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art. Although common
sense directs one to look with care at a patent application that claims as
innovation the combination of two known devices according to their
established functions, it can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does." Id. at 418.

I. APPEAL OF THE PATENT OWNER
A. Examiner's Rejections
1. The Examiner rejects claims 11-13 and 16-22 under 35 U.S.C.
§ 103(a) as unpatentable over Dismukes '856 in view of Scott
and/or Langer.
2. The Examiner rejects claims 11-13 and 15-22 30, 33, 35-37 and
42-46 under 35 U.S.C. § 103(a) as unpatentable over Dismukes
'719 in view of Scott and/or Langer.
3. The Examiner rejects claims 11-13, 15 and 17-22 under 35 U.S.C.
§ 103(a) as unpatentable over Leturno in view of Scott and/or
Langer.
4. The Examiner rejects claims 11-13 and 17-22 under 35 U.S.C.
§ 102 as anticipated by Dobson.
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5. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Leturno in view of Scott or Langer, and
Dismukes '719.
6. The Examiner rejects claim 48 under 35 U.S.C. § 103(a) as
unpatentable over Leturno or Dismukes '719 or '856 in view of
Scott and/or Langer, further in view of the admitted prior art.
7. The Examiner rejects claim 48 under 35 U.S.C. § 103(a) as
unpatentable over Dobson in view of the admitted prior art.

B. Issues
The following issues have been raised in the present appeal of the
Patent Owner.
1. Whether the step of "installing the one-way valve in the interior
passageway of the casing portion" in independent claim 11 is satisfied by
placing the one-way valve into the casing.
2. Whether Scott discloses introducing cement into the casing
after installing the one-way valve.
3. Whether the Examiner has sufficiently shown that it would
have been obvious to one of ordinary skill in the art to introduce cement into
the casing of Dismukes after installing the one-way valve in view of the
teachings in Scott.
4. Whether Langer discloses introducing cement into the casing
after installing the one-way valve.
5. Whether the Examiner has sufficiently shown that it would
have been obvious to one of ordinary skill in the art to introduce cement into
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the casing of Dismukes after installing the one-way valve in view of the
teachings in Langer.
6. Whether the Examiner erred in finding that the second ball of
Dobson, alone or in conjunction a slide valve, is "a one way valve" recited in
the claims.

C. Analysis
Rejections 1 and 2
Claims 11-13 and 16-22 were rejected as obvious based on Dismukes
'856 in view of Scott and/or Langer, and claims 11-13, 15-22, 30, 33, 35-37
and 42-46 were rejected as obvious based on Dismukes '719 in view of Scott
and/or Langer. Claim 11 is the sole independent claim in these rejections,
the remaining claims ultimately depending from independent claim 11. The
Examiner's rejections based on Dismukes '856 and '719 are substantially the
same. In this regard, the Patent Owner argues the rejections based on
Dismukes '856 and '719 together observing that the "teachings of both
Dismukes patents are identical for the purposes of the rejections in both
grounds, and were relied upon for the same reasons." (ABPO 6). Hence, we
address these rejections together.
In rejecting these claims, the Examiner concedes that both of the
Dismukes references fail to show or suggest the limitation "lowering a one-
way valve through the interior passageway of the casing portion after the
casing portion is located within the wellbore." (Ans. 6, 7). To address the
deficiencies of Dismukes relative to the claims, the Examiner contends that
Scott and Langer "both teach of the need to lower latching one-way valves
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into casing assemblies, that already include a float valve, in order to ensure
proper operation of the assembly during a subsequent cementation of the
annulus between the casing and the wellbore, since the preexisting float
valve may be damaged or otherwise compromised due to prior operations in
the well." (Ans. 6, 7; see also Respondent Brief of Requester ("RBR") 4).
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to install a one-way valve in the casing of Dismukes in view
of the teachings of Scott or Langer "in order to ensure proper operation of
the assembly during a subsequent cementation of the annulus between the
casing and the wellbore - since the preexisting float valve may be damaged
or otherwise compromised due to prior operations in the well." (Ans. 6, 7;
see also Ans. 15).
The Patent Owner contends that Examiner fails to set forth a prima
facie case of obviousness because neither Scott nor Langer discloses
"lowering a one-way valve through the interior passageway of the casing
portion after the casing portion is located within the wellbore" and fails to
disclose introducing a bonding material into the interior passageway "after
the step of installing the one-way valve" as recited in independent claim 11
(ABPO 7).
As to the Patent Owner's contention that neither Scott nor Langer
discloses "lowering a one-way valve through the interior passageway of the
casing portion after the casing portion is located within the wellbore," we
disagree. Scott describes running the casing, and circulating flushing fluid,
"before placing the free valve plug of the present invention into the flow
stream." (FF 2C). Likewise, Langer describes the desirability of not having
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the check valve in the well casing until after the pumping of the circulation
fluid had been complete, and the desirability of inserting the check valve
into place "after the casing string has reached the required depth." (FF 3B-
3D). Hence, we do not find error in the Examiner's rejections on this basis.
The Patent Owner's primary argument is that Scott and Langer fail to
disclose introducing a bonding material, such as cement, into the interior
passageway "after the step of installing the one-way valve" (ABPO 7).

Scott Reference
The Patent Owner contends that the Examiner has not set forth a
prima facie case because Scott discloses lowering of the one-way valve at
the same time the cement is introduced, and not "after the step of installing
the one-way valve" as required in independent claim 11 (ABPO 7, 8, 10).
We agree with the Patent Owner that Scott lowers the one-way valve at the
same time the cement is introduced, and thus the cement (bonding material)
is not introduced "after the step of installing the one-way valve" as required
(FF 2D, 2E).
The Examiner contends that even if Scott lowers the one-way valve at
the same time the cement is introduced, it still satisfies the pertinent
limitation because "the valve is placed into the casing and the cement is then
added, then the valve is installed in the casing and after this step of
installation, the cement is added into the casing . . .." (Ans. 15-16).
According to the Examiner, "[g]iven the broadest reasonable interpretation,
the term 'install' only means that the valve is placed in the casing-it does not
mean that it has reached the bottom of the well[,]" so that the disclosure of
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Scott satisfies the recited limitation (Ans. 16). The Requester's view is
consistent with those of the Examiner, the Requester stating "[s]ince there is
no body of cement below the plug P, it necessarily follows that the plug P is
installed in the casing string C and then a body of cement is introduced into
the casing string above the plug P." (RBR 4).
However, we agree with the Patent Owner that claim 11 requires both
lowering of the one-way valve through the casing, as well as installing the
one-way valve in the casing (Rebuttal Br. of PO 4), and agree that the
Examiner's position fails to recognize the distinctly recited "lowering" and
"installing" steps prior to introducing the bonding material. The Examiner's
construction of the term "installing" to merely refer to placing the one-way
valve in the casing is unreasonably broad and does not appear to account for
the "lowering" step so as to not be entirely consistent with the Specification
of the '050 patent which describes pumping of the valve downhole, and
latching it into place (FF 1A, 1B). As such, we adopt the Patent Owner's
construction that "installing" means that the one-way valve must be latched
and ready to work, referring to a dictionary definition for "install" as
meaning "to set up for use or service." (Hearing Transcript, pg. 8, ll. 9-12).
Such construction is consistent with the operation described in the
Specification of the '050 patent (FF 1A, 1B).
Hence, with the above construction, we agree with the Patent Owner
that Scott does not disclose the limitation "after the step of installing the
one-way valve, introducing a physically alterable boding material into the
interior passageway of the casing portion" as recited in claim 11. Further,
the Examiner's articulated reason based on the problem identified in Scott
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(FF 2B) for modifying Dismukes, and for installing a one-way valve after
locating the casing portion within the wellbore, does not sufficiently address
the limitation specifically requiring introduction of the bonding material
after installing the one-way valve. Indeed, the problem identified in Scott
(FF 2C) for modifying Dismukes is addressed by the solution taught in Scott
(FF 2D, 2E). The Examiner does not provide a persuasive reason for
deviating from the solution taught within Scott so as to introduce the cement
after lowering and installing the one-way valve.
In view of the above, we do not sustain the Examiner's rejections
based on the combination of Dismukes ('856 or '719) in view of Scott.

Langer Reference
The Patent Owner contends that the Examiner has not set forth a
prima facie case because a person of ordinary skill in the art would
understand Langer as disclosing lowering of a one-way valve into the casing
at the same time the cement is introduced in a manner similar to Scott
(ABPO 7, 9). In particular, the Patent Owner contends that Langer discloses
(1) installing a one-way valve in the casing before it is lowered
in the borehole in order to prevent drilling fluid from entering
the casing, (2) removing the one-way valve after the casing is in
the borehole and then installing a choke valve in the casing to
control the flow of cement into the annulus between the casing
and borehole, and (3) installing a second one-way valve after
the cement is introduced to prevent the cement from flowing
back into the casing.
(ABPO 9, citations to Langer omitted).
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We agree with the Patent Owner that Langer does not disclose when
the check valve is installed relative to the introduction of the cement
(Rebuttal Brief of Patent Owner ("RBPO") 8).
Understanding the disclosure of Langer is challenging because four
different "check valve means" (numerals 20, 48, 90 and 116) are disclosed
therein (FF 3E). Review of Langer indicates that cement is introduced
before installation of the check valve means 20 and 116 (FF 3F(2), 3F(3),
3I(1), 3I(2)). In addition, review of Langer indicates that the check valve
means 90 is installed before the casing is located within the wellbore (FF
3H(1), 3H(2)). Furthermore, because of the position of check valve means
48, we further infer that it is installed before the casing is located within the
well bore (FF 3G(1) and 3G(2)). Hence, Langer does not disclose the
limitations "lowering a one-way valve through the casing portion after the
casing portion is located within the wellbore" in conjunction with "after the
step of installing the one-way valve, introducing a physically alterable
boding material into the interior passageway of the casing portion" as recited
in claim 11. Implicit in our agreement with the Patent Owner is the claim
construction of "install" discussed supra.
The installation of the check valve means 20 or 116 after introduction
of the cement is consistent with addressing of the problem identified in
Langer (FF 3B). Whereas Langer includes broad statements as to placing a
check valve within the casing "before beginning the cementing process" or
"before beginning cementing operations" (FF 3C; see also FF 3D), it is
unclear from the record what constitutes "cementing process" or "cementing
operations." Furthermore, understanding such statements to mean that the
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check valves are pumped down using fluid and installed prior to introduction
of the cement would be contradictory to the objective of avoiding potential
damage to the check valve by not having the check valve in position until
after completing pumping of the circulation fluid (FF 3B). Significantly, a
more detailed review of the DESCRIPTION OF THE PREFERRED
EMBODIMENT indicates that Langer does not disclose the recited steps of
claim 11 wherein the bonding material is introduced after installing the one-
way valve (FF 3F(1)-3I(2)). Hence, in view of the broader teaching and
objective of minimizing potential damage to the check valve by not having
the check valve in position until after pumping of the circulation fluid (FF
3B), as well the fact that statements as to placement of the check valve
"before beginning cementing" process/operations are in the
BACKGROUND OF THE INVENTION, it appears more likely than not
that a person of ordinary skill in the art would understand Langer as
disclosing lowering of a one-way valve into the casing using the cement like
Scott as advocated by the Patent Owner (RBPO 10).
Further, the Examiner's articulated reason for modifying Dismukes
based on the problem identified in Langer (FF 3B) and for placing the one-
way valve after locating the casing portion within the wellbore does not
sufficiently address the limitation specifically requiring introduction of the
bonding material after installation of the one-way valve. The Examiner does
not provide a persuasive reason for deviating from the solution taught within
Langer so as to introduce the cement after installing the back-pressure valve
which appears to be contrary to the objective of Langer (FF 3B).
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In view of the above, we also do not sustain the Examiner's rejections
based on the combination of Dismukes ('856 or '719) in view of Langer.
Hence, we do not sustain Rejections 1 and 2.

Rejections 3 and 5
Claims 11-13, 15 and 17-22 also stand rejected as obvious over
Leturno in view of Scott and/or Langer (Ans. 8). The Examiner asserts that
"[t]he claimed invention differs from Leturno only in the lowering of a one-
way valve through the interior passageway of the casing portion after the
casing portion is located within the wellbore[,]" but that this is taught in
Scott and Langer, and would have been obvious to modify Leturno in view
of Scott and/or Langer in order to ensure proper operation of the assembly
(Ans. 8). The Requester agrees with the Examiner that Scott and/or Langer
remedies the deficiency of Leturno (RBR 6).
The Patent Owner relies on substantially the same arguments
regarding the deficiencies of Scott and Langer to contend that "even if all
three references are considered together, all the steps in claim11 are not
taught[,]" because the references do not describe "lowering a one-way valve
into the casing portion after the casing portion is installed in the wellbore,
and introducing cement after the cone-way valve is installed in the casing
portion . . ." (ABPO 16; see also RBPO 13).
We agree with the Patent Owner that neither Scott nor Langer
discloses what the Examiner asserts as discussed supra. The Examiner's
reliance on Leturno does not address the deficiencies noted with respect to
Scott or Langer. Hence, we do not sustain the Examiner's rejections as to
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claims 11-13, 15 and 17-22 based on the combination of Leturno in view of
Scott and/or Langer (Rejection 3). The Examiner's rejection of dependent
claim 16 in further view of Dismukes '719 (Rejection 5; Ans. 10) is also not
sustained, the Examiner's application of Dismukes failing to remedy the
deficiency of Leturno in view of Scott and/or Langer.

Rejections 4 and 7
The Examiner contends that Dobson also anticipates claims 11-13 and
17-22 (Rejection 4; Ans. 8-9), and that claim 48 is unpatentable over
Dobson in view of the admitted prior art (Rejection 7; Ans. 11). The
Examiner contends that "a ball valve is a one-way valve as recognized in the
art" and "[t]he second ball of Dobson '423 is a valve element since its
presence within the passageways of the tool of Dobson '423 acts to control
the flow of fluidic material, whether alone or in combination with the slide
valve 230." (Ans. 16-17). The Requester agrees with the Examiner and
contends that the second ball of Dobson is a "valve element" which "controls
the flow of fluidic material, whether alone or in combination with the slide
valve 230." (RBR 6-7).
The Patent Owner disagrees and contends that the second ball of
Dobson is not a valve and Dobson does not "substantially displac[e] the
physically alterable bonding material from the interior passageway through
the one-way valve and into the annulus" as required by claim 11 (ABPO 18;
see also RBPO 15). Instead, the Patent Owner contends that the cement is
introduced through the slide valve 230 which is "part of the casing, and
therefore, cannot possibly be lowered into the casing after it is in place."
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(ABPO 18; see also RBPO 15-16). According to the Patent Owner, "[t]hus,
the cement does not flow through a one-way valve as characterized by the
Examiner, nor is the ball a one-way valve that closes when pressure from the
interior passage is reduced." (ABPO 18).
Hence, as to the anticipation rejection, the dispositive issue is whether
the described "second ball", either alone, or in conjunction with the slide
valve 230, is "a one-way valve" as recited in independent claim 11. Initially,
we agree with the Patent Owner that the second ball, by itself, is not a valve,
much less a one-way valve. The second ball does not control flow by itself,
and we fail to see how the cement or other fluid can be displaced "through"
the second ball.
As to the Examiner's alternative position that the second ball, together
with the slide valve 230, satisfies the recitation for "a one-way valve" (Ans.
16-17; see also RBR 6-7), we disagree and find the Examiner's construction
of "one-way valve" to encompass the combination of the second ball
together with the slide valve 230 to be unreasonably broad. We note that we
do not find improper, the Examiner's contention that the second ball is a
valve element that can form a one way-valve in conjunction with another
component of Dobson. However, the slide valve 230 is part of the casing
220 and the second ball does not even interact with the slide valve 230. The
second ball actually contacts and is received in the seat 256 of the sleeve
piston 254 to thereby open the circulating valve 250 (FF 4D-4F) which is an
intervening structure between the second ball and the slide valve 230. While
opening of the circulating valve 250 may be required for operation of the
slide valve 230 and to open the cement ports 224, the slide valve 230 is
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actually opened by sufficiently over-pressurizing the annular space between
the rubber cups 262 and 264 (FF 4G).
In our view, the only structure of Dobson that the Examiner can
reasonably rely on as defining valve in conjunction with the second ball
which controls fluid flow is the circulating valve 250 together with the
piston 254 therein upon which the second ball seats. However, the
circulating valve 250 and piston 254 are not lowered "through the interior
passageway of the casing portion after the casing portion is located within
the wellbore" as required by claim 11.
Therefore, in view of the above, we disagree with the Examiner that
Dobson discloses each and every limitation of independent claim 11, and
thus, do not sustain the anticipation rejection of claims 11-13 and 17-22
(Rejection 4). The Examiner's rejection of dependent claim 48 in further
view of the admitted prior art (Rejection 7; Ans. 11) is also not sustained,
the Examiner's application of the admitted prior art failing to remedy the
deficiency of Dobson.

Rejection 6
The Examiner rejects claim 48, which depends from claim 11, as
unpatentable over Leturno or Dismukes '719 or '856 in view of Scott and/or
Langer, further in view of the admitted prior art (Ans. 11). However, the
Examiner's rejection is based on the same combinations of prior art
references as applied with respect to the rejections of claim 11 which we
found to be unsustainable. In this regard, the Examiner's application of the
admitted prior art fails to remedy the deficiencies of the suggested
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combinations of Leturno, Dismukes, Scott and/or Langer. Thus, we likewise
do not sustain this rejection.

D. Conclusions With Respect to Appeal of the Patent Owner
1. The step of "installing the one-way valve in the interior
passageway of the casing portion" is not satisfied by merely placing the one-
way valve into the casing.
2. Scott does not disclose introducing cement into the casing after
installing the one-way valve.
3. The Examiner has not sufficiently shown that it would have
been obvious to one of ordinary skill in the art to introduce cement into the
casing of Dismukes after installing the one-way valve in view of the
teachings in Scott.
4. Langer does not disclose introducing cement into the casing
after installing the one-way valve.
5. The Examiner has not sufficiently shown that it would have
been obvious to one of ordinary skill in the art to introduce cement into the
casing of Dismukes after installing the one-way valve in view of the
teachings in Langer.
6. The Examiner erred in finding that the second ball alone, or in
conjunction the slide valve of Dobson, is "a one way valve" recited in the
claims.

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E. Orders With Respect to Appeal of the Patent Owner
The rejections of the Examiner as appealed by the Patent Owner are
REVERSED.

II. CROSS-APPEAL OF REQUESTER
A. Examiner's Refusals
The Requester cross-appeals the Examiner's refusal to adopt the
following proposed rejections:
1. Claims 23, 30, 33, 35-37 and 42-46 under 35 U.S.C. § 103 as
unpatentable over Dismukes '719 in view of Scott and/or Langer.
2. Claims 23-29 under 35 U.S.C. § 103 as unpatentable over Leturno
in view of Scott and/or Langer.
3. Claims 11-13, 15-30, 33, 35-37, 42-46 and 48-51 under 35 U.S.C.
§ 103 as unpatentable over Gaines in view of Scott and/or Langer.
4. Claims 49-51 under 35 U.S.C. § 103 as unpatentable over the
"prior art."

B. Issues
The following issues have been raised in the present cross-appeal of
the Requester:
1. Whether the Examiner erred in refusing to adopt the proposed
rejections based on Dismukes '719 in view of Scott and/or Langer.
2. Whether the Examiner erred in refusing to adopt the proposed
rejections based on Leturno in view of Scott and/or Langer.
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3. Whether the Examiner erred in refusing to adopt the proposed
rejections based on Gaines in view of Scott and/or Langer.

C. Analysis
Proposed Rejection 1
Claim 23
Claim 23 is an apparatus claim which recites that the one-way valve
comprises "a latch for engagement with an annular recess" provided on the
casing portion of the drill string. The Requester contends that Dismukes
'719 discloses that a customary two plug cementation may be performed that
conveys the cement through the casing (CABR 7). The Requester points out
that Scott discloses a plug P with a one-way check valve which "includes a
latch 25 that engages an annular recess 24 provided within the casing string
C." (CABR 8, citing Scott at col. 5, ll. 32-46 and Figs. 4-7). The Requester
also points out that Langer discloses a one-way valve 20 with a latch 34 that
engages groove 46 (CABR 8, citing Langer at col. 5, l. 29-col. 6, l. 54 and
Figs 1-3).
The Requester argues that the latches of Scott and Langer could be
"reconfigured" and mounted in the external annular recess of the plug P to
provide equivalent functionality (CABR 8). The Requester further argues
that it would have been obvious "to have installed a latching one-way valve
in the casing 326 of Dismukes '719 and provided a suitable internal annular
recess within the casing 326 for receiving the latching element of such a
latching one-way valve, as taught by Scott '219 and Langer '495, in order to
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ensure proper operation of the assembly during a subsequent cementation . .
.." (CABR 10).
The Examiner declined to adopt the proposed rejection based on the
combination of Dismukes '719 in view of Scott and/or Langer stating that
while the Examiner agrees with the Requester that both Scott and Langer
teach latching a one-way valve, none of the references teach latching in an
"annular recess" in the casing since none of the references disclose an
annular recess in the casing (Ans. 11 and 17). The Patent Owner agrees and
argues, inter alia, that the prior art does not disclose wiper plugs that have a
latch for engagement with the annular recess (Res. Br. PO 4, 9). We
generally agree with the Examiner and the Patent Owner.
As the Examiner observed, none of the prior art references disclose an
annular recess in the casing or latching thereon by a one-way valve. Hence,
the modification suggested by the Requester is not merely a combination of
the prior art, but further requires relocation of the annular recess to be on the
interior of the casing. While the Requester contends that it would be
obvious to "reconfigure" Scott or Langer, it is not apparent to us, nor does
the Requester persuasively argue, why one of ordinary skill would make the
combination and modification suggested considering that such a latch would
likely increase the risk of damage to the latch by virtue of its contact with
the casing when pumped downhole. As evidenced by the record, both Scott
and Langer are very much concerned with reliability of the one-way valve
(FF 2A, 3B). If the components of the latch are damaged by virtue of its
contact with the casing, the one-way valve would not latch and fail to serve
its function. In this respect, we observe that in both Scott and Langer in
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which the one-way valve is pumped downhole, the components that function
together as a latch have reduced diameters as compared to the casing (FF 2F,
3J).
Therefore, the articulated reason of the Requester is insufficient to
conclude obviousness and we sustain the Examiner's refusal to adopt the
proposed rejection of claim 23.

Claims 30, 33, 35-37 and 42-46
While the Requester has argued obviousness of method claims 30, 33,
35-37 and 42-46 together with apparatus claim 23, we observe that the
method claims ultimately depend from independent method claim 11. The
Requester's argument as to the Examiner's error in not rejecting these claims
does not address the deficiencies of Scott and Langer discussed supra with
respect to the Examiner's rejection of independent claim 11 which we do not
sustain. Correspondingly, we also sustain Examiner's refusal to adopt the
proposed rejection of claims 30, 33, 35-37 and 42-46 that ultimately depend
from independent method claim 11.

Proposed Rejection 2
Independent claim 23, and claims 24-29 that depend therefrom, all
require a one-way valve with "a latch for engagement with the annular
recess" provided on the casing portion of the drill string. The Examiner
declined to adopt the proposed rejection based on the combination of
Leturno in view of Scott and/or Langer because none of the references teach
latching in an "annular recess" in the casing (Ans. 11-12, 17).
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The Requester's arguments as to unpatentability of these claims based
on the combination of Leturno in view of Scott and/or Langer (CABR 11-
14) are substantively the same as those of the proposed rejection of claim 23
based on the combination of Dismukes '719 in view of Scott and/or Langer.
Hence, we sustain the Examiner's refusal to adopt the proposed rejection of
claims 23-29 for the reasons set forth supra relative to claim 23 in Proposed
Rejection 1.

Proposed Rejection 3
The Requester contends that the Examiner erred in refusing to adopt
the proposed rejection of claims 11-13, 15-30, 33, 35-37, 42-46 and 48-51 as
unpatentable over Gaines in view of Scott and/or Langer (CABR 14). The
Requester points out that Gaines describes one-way valve 18 positioned in
the drill pipe 25, but concedes that Gaines "does not disclose lowering a one-
way valve through the passageway of the casing string 31 after the casing
string 31 is located in the wellbore." (CABR 15-16). However, the
Requester relies on Scott or Langer as disclosing this limitation and for
disclosing installation of one-way valves into the casing "before cement is
introduced into the casing . . .." (CABR 15-16). The Requester concludes
that it would have been obvious to install a latching one-way valve as taught
in Scott and Langer in the casing string of Gaines, and provide a suitable
internal annular recess within the casing string 31 (CABR 17).

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Claim 11
As to independent claim 11, the Examiner contends that lowering of
valve 18 into the casing after locating the casing is within the wellbore
would not be possible in the configuration of Gaines and would destroy the
functionality disclosed in Gaines (Ans. 12, 18). In this regard, the Examiner
observes that Gaines discloses cementing without removal of the mud motor
so that cement is run through the one-way valve 18 within the drill head
upon completion of drilling (Ans. 18).
The Requester responds that lowering a latching one-way valve in
Gaines would not destroy the functionality thereof "since such a process
would necessarily be performed to facilitate the cementation process that
would occur after completing the drilling process . . .." (CABR 18).
However, the proposed rejection does not address the deficiencies of Scott
and Langer as to the limitations of claim 11 which require lowering and
installing the one-way valve, and introducing the bonding material only after
installing the one-way valve as already discussed.
Thus, we find no reversible error in the Examiner's refusal to adopt
the proposed rejection of the method claim 11, as well as claims, 12, 13, 15-
22, 30, 33, 35-37, 42-46 and 48-51 depending therefrom, based on the
combination of Gaines in view of Scott and/or Langer.

Claim 23
The Examiner declined to adopt the proposed rejection based on the
combination of Gaines in view of Scott and/or Langer because none of the
references teach latching in an "annular recess" in the casing (Ans. 12-13,
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17). The Requester's arguments as to unpatentability of claims 23-29 based
on the combination of Gaines in view of Scott and/or Langer (CABR 18-22)
are substantively the same as those of the proposed rejection of claim 23
based on the combination of Dismukes '719 in view of Scott and/or Langer.
Hence, we find no reversible error in the Examiner's refusal to adopt the
proposed rejection of claims 23-29 for the reasons set forth supra relative to
Proposed Rejection 1.

Proposed Rejection 4
Claims 49-51 ultimately depend from independent method claim 11;
claim 49 also requiring a latching float collar valve assembly; claim 50
requiring latching the float collar valve assembly into a recess in the interior
passageway; and claim 51 requiring installing the one-way valve into
engagement with a recess in the interior passage way.
The Requester contends that claims 49-51 are obvious over the "Prior
Art" (CABR 22). The "Prior Art" relied upon by the Requester to contend
obviousness of these claims is Gaines, Scott and Langer, and the arguments
proffered by the Requester are substantially the same as those proffered with
respect to the proposed Rejection 3 discussed supra (CABR 22-27).
However, the proposed rejection does not address the deficiencies of
Scott and Langer as to the limitations of claim 11 which require lowering
and installing the one-way valve, and introducing the bonding material only
after installing the one-way valve as already discussed. Further, the
Requesters arguments with respect to claims 50 and 51 to reconfigure the
latch structure of Scott or Langer to latch to recesses of the Gaines (CABR
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24-25) is unpersuasive for the reasons already discussed supra with respect
to the proposed Rejection 1.
Hence, we find no reversible error in the Examiner's refusal to adopt
the proposed rejection of claims 49-51.

D. Conclusions
1. We find no error in the Examiner's refusal to adopt the
proposed rejections based on Dismukes '719 in view of Scott and/or Langer.
2. We find no error in the Examiner's refusal to adopt the
proposed rejections based on Leturno in view of Scott and/or Langer.
3. We find no reversible error in the Examiner's refusal to adopt
the proposed rejections based on Gaines in view of Scott and/or Langer.

E. Orders With Respect to the Cross-Appeal of the Requester
The Examiner's refusals to adopt the proposed rejections as cross-
appealed by the Requester are AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED-IN-PART
ack

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cc
For Patent Owner:
MORGAN LEWIS & BOCKIUS LLP
1111 PENNSYLVANIA AVENUE, NW
WASHINGTON, DC 20004

For Third Party Requester :
BRACEWELL & GIULIANI LLP
P.O. BOX 61389
HOUSTON, TX 77808-1389