Ex Parte Achee et al

Board of Patent Appeals and Interferences

Nov 14, 2007

10709755 (B.P.A.I. Nov. 14, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY T. ACHEE, JR. and CHRISTOPHER B. HINES
____________

Appeal 2007-2037
Application 10/709,755
Technology Center 3600
____________

Decided: November 14, 2007
____________

Before WILLIAM F. PATE III, TERRY J. OWENS, and
LINDA E. HORNER, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

This is an appeal from the final rejection of claims 1-23. These are
the only claims in the application.
We have jurisdiction over the appeal pursuant to 35 U.S.C. §§ 134 and 6.
The claimed invention is directed to a multi-zone completion for an
oil well. At least three zones are completed. The completions are
Appeal 2007-2037
Application 10/709,755

characterized by at least three sand control assemblies, three independent
flow conduits, and three flow control devices to control the three conduits.
At least two of the conduits include an annular pathway.
Claim 1 reproduced below, is further illustrative of the claimed
subject matter.
1. An apparatus for use in a well having at least three zones,
comprising:

at least three sand control assemblies for positioning
proximal respective zones;

a flow assembly defining at least three flow conduits to
respectively communicate with the at least three zones,

wherein each of at least two of the flow conduits includes
an annular path; and

at least three flow control devices to respectively control
flow of the at least three flow conduits.

The references of record relied upon by the examiner as evidence of
obviousness are:
Patel (Patel ‘298) US 6,227,298 B1 May 08, 2001
Patel (Patel ‘216) US 6,302,216 B1 Oct. 16, 2001
Claims 1-18, 20 and 21 stand rejected under 35 U.S.C. § 103 as
unpatentable over Patel ‘298.
Claims 19, 22 and 23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Patel ‘298 in view of Patel ‘216.
In the Brief, Appellants argue claims 1-18, 20 and 21 as one group
and claims 19, 22 and 23 as a second group. However, in the argument on
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Application 10/709,755

page 7, the patentability of claims 19, 22 and 23 is found to be solely based
on their respective base claims. Accordingly, we have chosen claim 1 as a
representative claim, and all of the claims on appeal will stand or fall with
claim 1. See 37 C.F.R. § 41.37 (c)(1)(vii) (2007).

ISSUE
As outlined above, all of the claims stand or fall with claim 1.
Accordingly, the sole issue presented is whether the Appellants have
established that the Examiner has erred in rejecting claim 1 on the ground of
obviousness.

FINDINGS OF FACT
Patel ‘298 discloses a well completion system. The Figures in the
patent illustrate isolated completions from two zones 20 and 22. The two
zones have been perforated at 150 and 152. The zones have been isolated by
packers 166, 168 and 170. The zones are produced through screens 154 and
156. See, generally, col. 2, l. 56 through col. 3, l. 25. Two isolated flow
conduits are provided to the surface. The first conduit, a central conduit
flows through the bottom valve section 104 into ports 108. Col. 3, ll. 15-24.
The second flow conduit is an annular conduit in second valve section 102
including ports 106 and allows flow from the second wellbore section 112
that is in communication with the second zone 22. Id. The valve sections
104, 102 are flow control devices. Thus, Patel ‘298 is a recognition in the art
that multiple flow paths are known, and that a flow path can take the form of
a central flow path or an annular flow path.
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Application 10/709,755

Patel ‘298 also contemplates multiple completions with more than two
zones. For example, in column 2, Patel states “the formation isolation
system according to further embodiments may include multiple valves for
use with more than two zones.” Patel ‘298, col. 2, ll. 25-26. Additionally,
Patel ‘298 states that “[a]lthough the illustrated embodiments refer to two
zones and two valves in the multivalve assembly 190, other embodiments
may include a greater number of valves for use with a corresponding number
of zones.” See col. 4, ll. 13-15. Thus, not only does Patel ‘298 recognize
multiple fluid conduits, either annular or central, Patel ‘298 recognizes
individual and independent conduits which may include a valve or flow
control device for each conduit and each producing zone.

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., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, and (3) the level of skill in the art. Graham
v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also
KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
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Application 10/709,755

continue to define the inquiry that controls.”) The Court in Graham further
noted that evidence of secondary considerations “might be utilized to give
light to the circumstances surrounding the origin of the subject matter sought
to be patented.” 383 U.S. at 18, 148 USPQ at 467.
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, 82 USPQ2d at 1395, and discussed circumstances in which
a patent might be determined to be obvious.
In particular, the Supreme Court emphasized that “the principles laid
down in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11
How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham,
383 U.S. at 12, 148 USPQ at 464, and reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.

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Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id.
ANALYSIS
We will sustain the rejection of claim 1 as unpatentable over Patel
‘298. We agree with the examiner that the use of an additional annular flow
path or conduit in Patel ‘298 is merely applying a known technique to a
known device which readily yields predictable results and therefore is likely
to have been obvious. See KSR at 1742, 82 USPQ2d at 1397. This is
particularly so in view of the fact that Patel ‘298 clearly contemplates
producing from more than two zones using an independent well isolation
system with each isolated zone having its own flow control valve.
Moreover, it is our view that whether the additional flow conduit is annular
or the additional flow conduit is an additional tubing installed centrally in
the well completion is merely a choice from a finite number of identified
predictable solutions. Since Patel ‘298 teaches the viability of either of these
solutions, one of ordinary skill would have recognized that either yields a
reasonable expectation of success. Therefore, one of ordinary skill would
have found it obvious to try additional annular flow conduits over the single
annular flow conduit disclosed in Patel ‘298. See KSR, 127 S. Ct. 1742, 82
USPQ2d at 1397.
We have carefully considered Appellants’ arguments but as noted
above, we do not agree that the Examiner has not made out a prima facie
case of obviousness. We further note the argument that Patel ‘298 does not
disclose or suggest an additional flow conduit that would be an annular path.
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Application 10/709,755

While this is true, it would seem to run to a rejection under § 102 and is
irrelevant under § 103.
Appellants further argue that there is no objective evidence that would
have suggested a modification of Patel ‘298 to provide a second annular
path. However, as the Supreme Court has stated in KSR, the obviousness
analysis need not seek out precise teachings directed to the specific subject
matter of a challenged claim, for a court can take into account the inferences
and creative steps that a person of ordinary skill in the art would employ.
See KSR at 1741, 82 USPQ2d at 1396.

CONCLUSION AND ORDER
The Appellants have failed to establish that the Examiner erred in
rejecting claim 1 on the ground of obviousness. Therefore, the rejections of
claims 1-23 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a) (1) (iv).

AFFIRMED

vsh

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Appeal 2007-2037
Application 10/709,755

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