Ex Parte Allison et al

Patent Trial and Appeal Board

Feb 23, 2016

12870476 (P.T.A.B. Feb. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/870,476
49431 7590
Locke Lord LLP
P.O. Box 55874
Boston, MA 02205
FILING DATE FIRST NAMED INVENTOR
08/27/2010 David B. ALLISON
02/25/2016
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009-IP-028050 Ul US 9889
EXAMINER
COY, NICOLE A
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
02/25/2016 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID B. ALLISON, LEONARD CASE, and
ALFK. SEVRE
Appeal2014-000845
Application 12/870,476 1
Technology Center 3600
Before JOHN C. KERINS, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David B. Allison et al (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's Final decision rejecting claims 1-3, 5-7, 9-12, and 14-
18.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
According to Appellants, the real party in interest is Halliburton
Energy Services, Inc. Appeal Br. 3 (filed July 03, 2013).
2 Claims 4, 8, 13, and 19 have been withdrawn. Final Act. 1.
Appeal2014-000845
Application 12/870,476
fNVENTION
Appellants' invention relates generally to equipment utilized and
operations performed in conjunction with a subterranean well and, more
particularly, the use of swellable glass. Spec. 2, 1. 18-3, 1. 9.
Claims 1 and 9 are independent claims. Claim 1 is representative of
the claimed invention and reads as follows:
1. A well tool, comprising:
a swellable material in the well tool, the swellable
material comprising a swellable glass.
REJECTIONS
I. The Examiner rejected claims 1, 2, 7, 9-11, and 16-18 under
35 U.S.C. § 103(a) as unpatentable over Koloy (US
2009/0179383 Al, pub. July 16, 2009) and Edmiston (Swelling
Glass, "Osorb" and a 21st Century Materials Company).
II. The Examiner rejected claims 3, 5, 6, 12, 14, and 15 under
Rejection I
35 U.S.C. § 103(a) as unpatentable over Koloy, Edmiston, and
De (US 2009/0205816 Al, pub. Aug. 20, 2009).
ANALYSIS
Claims 1, 9, 17, and 18
Appellants separately set forth arguments for the patentability of
claims 1 and 9. See Appeal Br. 9-11, 13-15. Those arguments, however,
are substantively identical to each other. Id. In addition, Appellants group
claims 1 7 and 18 with claim 9. Id. at 13. Therefore, we select claim 1 to
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Application 12/870,476
decide the appeal of the obviousness rejection of these claims, with claims 9,
17, and 18 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Regarding claim 1, Appellants argue that no convincing reasoning has
been presented for why a person skilled in the art would have been
motivated to make the combination of Edmiston and Koloy. Appeal Br. 11.
Appellants contend "the Edmiston glass material is particularly unsuited for
use as the swellable seal element in Koloy' s packer, and Koloy provides no
way at all of controlling swelling of the glass material." Id. (original
emphasis). Edmiston is unsuitable because it describes a particulate glass
material, and Koloy provides no guidance for containing, or controlling the
"instant" swelling of, a particulate material, according to Appellants. Id. at
9-11.
Appellants' arguments are not persuasive. Two issues are actually
presented by Appellants' arguments. The first issue is whether a person of
ordinary skill in the art would have had a reason to use the swellable glass
material of Edmistion with the packer of Koloy. The second issue is
whether the prior art enables a person of skill in the art to make and use the
invention. In considering both issues, we accept Appellants' representation
that
the person having ordinary skill in the art would likely have a
bachelor's degree in engineering or a related applied science
field, and would likely have several years' experience in
designing well tools for use in subterranean wells. Such a person
would be aware of conventional swellable packers, similar to that
described by Koloy.
Id. at 11. The Examiner does not challenge the above skill level and
knowledge.
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Application 12/870,476
The first issue is easily resolved against Appellants. Koloy teaches a
packer assembly with a seal element that outwardly extends in order to
sealingly engage the surface of the well. Koloy i-f 18. The seal element
includes a swellable material that swells in response to contact with certain
fluids in a well. Id. Those of skill in the art would recognize a swellable
material is a material that increases in volume, typically, by incorporating
molecular components of the fluid into the seal material itself. Id. i-f 19. As
the Examiner points out, Koloy instructs that "any swellable material which
swells when contacted by any type of fluid may be used in keeping with the
principles of the invention" (id. i-f 26). See Final Act 2. Edmiston discloses
"a highly structured glass which instantaneously swells when it comes in
contact with a wide range of Organic molecules," such as gasoline and
natural gas. Edmiston 3.
Given the background knowledge of the ordinarily skilled artisan and
the teachings of Koloy, a preponderance of the evidence supports the
Examiner's finding that substituting the swellable glass material of Edmiston
into the sealing element of the Koloy packer assembly was a known option
and not a product of innovation. See Ans. 4, Final Act. 5. Koloy broadly
encourages the skilled artisan to consider any swellable material that swells
when contacted by any type of fluid and, consistent with that guidance,
Edmiston teaches such a material that swells when it comes in contact with
organic molecules found in fluids. See id. A skilled artisan would
appreciate, as Appellants note, "[ t ]he glass particles [of Edmiston] swell
when they trap impurities therein." Appeal Br. 9. Because the glass
material of Edmiston has the desired characteristics Koloy directs a skilled
artisan to seek- i.e., swelling by trapping impurities, the facts support the
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Examiner's finding that a skilled artisan knew to substitute one swellable
material for another, which would predictably result in a packer with a seal
element that swells when in contact with an actuating fluid. See Ans. 4,
Final Act. 5.
Regarding the second issue, a preponderance of the evidence also
supports the Examiner's finding "it would be within the skill of one [of
ordinary skill] to know how to contain a particulate glass material and how
to control instant swelling in the combination of Koloy and Edmiston." Ans.
4--5; see also Final Act. 5. The Examiner correctly notes that Koloy
evidences the skilled artisan knew to use "composite materials," which are
"made up of a mixture of different materials, with the result that each of the
materials contributes beneficially to the properties of the composite
material." Koloy i-f 29. Koloy even recognized that the matrix comprising a
composite material could include fibrous materials, such as glass. Id. ("One
example is a composite material made up of fibrous material (such as glass
or carbon fibers, etc.) in a hardenable matrix."). Therefore, Koloy shows the
skilled artisan knew how to incorporate particulate materials, such as
swellable glass, into the matrix of a composite material to obtain the
beneficial results. See id. De, as well, evidences that it would have been
known in the art that particulate swellable materials would be suitable for
use in packers. De i-fi-123, 26, 27.
Furthermore, the Examiner cites Koloy' s incorporation by reference
of U.S. Patent Publication Application No. 200410020662 Al (hereinafter
"Freyer") to show the ordinary artisan would have known how to control the
instant swelling of the Edmiston swellable glass. Ans. 4-5. Freyer shows
how to create a packer assembly with a core and a surrounding protective
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mantle. Freyer il I 7. The core comprises a swellable elastic polymer, which
can be a composite material including materials dissolved or in mechanical
mixture to enhance the performance properties (i.e., particulate materials
may be included in the matrix of the swellable elastic polymer). Id. i-f 18.
The external mantle works as a permeable membrane and has a lower rate of
diffusion toward hydrocarbons than the core. Id. i-f 17. Freyer discloses that
"[b ]y immersion in a hydrocarbonaceous medium, hydrocarbons migrate
into and through the external mantle ... and further into the core ... , which
is swelling upon absorption of these." Id. i-f 20. Freyer additionally teaches
that a packer assembly such as the one disclosed can effectively address
problems associated with "undesired early expansion." Id. i-f 5. Therefore,
Freyer is evidence supporting the Examiner's finding that the skilled artisan
would have known how to control the instant swelling of the Edmiston
swellable glass.
"The applicant has the burden of coming forward with evidence in
rebuttal, when the prior art includes a method that appears, on its face, to be
capable of producing the claimed composition." In re Kumar, 418 F.3d
1361, 1368 (Fed. Cir. 2005). "This burden may be met by presenting
sufficient reason or authority or evidence, on the facts of the case, to show
that the prior art method would not produce or would not be expected to
produce the claimed subject matter." Id. In this case, Appellants have not
carried their burden. Appellants here rest completely on attorney argument.
For example, Appellants represent that "significant problems would be
encountered in substituting Edmiston's swelling glass material for Koloy's
seal element, and so a person of ordinary skill in the art would not be
motivated to do so." Appeal Br. 9; Reply Br. 9. Notably absent from
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Appellants' challenge is any supporting reference to evidence in the record.
Appellants do not offer any affidavit from a skilled artisan, or cite to any
specific information found in the prior art to support their contention. Nor
do Appellants sufficiently explain a reason why a skilled artisan would
encounter "significant problems" trying to incorporate the swellable glass
particulates into a matrix forming a swellable material (i.e., a swellable
composite material).
Furthermore, we note, in the Appeal Brief, Appellants point to a
preferred embodiment of the invention in which "the swellable glass
material 44 is incorporated into a matrix material 50 of the seal element 24."
Appeal Br. 7 (citing Spec. Fig. 4 ). In the Specification, Appellants identify
Osorb TM, the exact same particulate material disclosed by Edmiston, as a
suitable swellable glass material for that embodiment, which is included into
the matrix of a conventional swellable material. Spec. 11, 11. 20-25; 12,
11. 15-20. What is telling is that Appellants do not provide any guidance,
direction, or instruction that would assist a skilled artisan in overcoming the
alleged "significant problems" that person would face trying to incorporate
the swellable glass particulates into a conventional swellable material
matrix. Presumably, because Appellants are required to provide an enabling
description of the invention under 35 U.S.C. § 112, Appellants do not
provide that information because an ordinarily skilled artisan already knows
how to incorporate the particulates into the matrix.
Regardless, Appellants do not put forth any credible evidence or
sufficient reasoning to establish that the combination of Koloy and Edmiston
neither suggests the claimed combination nor enables a person of ordinary
skill to make and use the invention of claim 1. Appellants' conclusory
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statements about the difficulties posed by Edmiston's swellable glass being
particulates and swelling instantly, which are unsupported by factual
evidence, have little probative value. See In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). A preponderance of the evidence, on the other hand, supports the
Examiner's obviousness rejection of claim 1 as unpatentable over Koloy and
Edmiston. We, therefore, sustain the Examiner's rejection of claim 1. Thus,
we also sustain the Examiner's rejection of claims 9, 1 7, and 18 for the same
reasons.
Claims 2 and 11
Appellants' arguments for claims 2 and 11 are identical. See Appeal
Br. 12, 16-17. Moreover, Appellants again assert the Examiner's
obviousness rejection of claims 2 and 11 should be reversed because
"neither [the Koloy nor Edmiston] reference describes how a swellable glass
could be included in a swellable seal of a well" and "neither of the Edmiston
and Koloy references teaches or suggests incorporating a swellable glass
material in a swellable seal of a well tool." Id. For the reason discussed
above (see supra, claims 1, 9, 17, and 18), we remain unpersuaded the
Examiner erred. Therefore, the Examiner's obviousness rejection of claims
2 and 11 is sustained.
Claims 7 and 16
Appellants' arguments for claims 7 and 16 are identical. See Appeal
Br. 13, 1 7. Moreover, Appellants again assert the Examiner's obviousness
rejection of claims 7 and 16 should be reversed because "neither [Koloy nor
Edmiston] describes how a particulate swelling glass material could be used
in a packer assembly" and "a person of ordinary skill in the art would not
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have been motivated to make the combination of the Edmiston and Koloy
references." Id. For the reason discussed above (see supra, claims 1, 9, 17,
and 18), we remain unpersuaded the Examiner erred. Therefore, we sustain
the Examiner's obviousness rejection of claims 7 and 16.
Claim 10
In rejecting claim 10, the Examiner states, "[Koloy] in view of
Edmiston disclose further comprising the step of un-swelling the swellable
material in the well (wherein the packer is un-swollen before it is inserted
and when it is removed)." Final Act. 3. Appellants allege the Examiner
erred because "claim 10 requires the un-swelling step be performed in the
well." Appeal Br. 16 (original emphasis). We agree. Appellants are correct
that evidence the swellable material is un-swollen sometime before and/or
after being in the well is still not evidence of "un-swelling the swellable
material in the well," as required by claim 10. See Appeal Br. 16, 21 (Claim
App.). As such, a preponderance of the evidence fails to support the
Examiner's obviousness conclusion for claim 10. Therefore, we do not
sustain the Examiner's obviousness rejection of claim 10.
Rejection II
For the rejection of claims 3, 5, 6, 12, 14, and 15, Appellants contend
that those claims are allowable because the respective independent claim 1
or 9 from which they depend is allowable. Appellants do not set forth any
separate or different arguments for patentability. Therefore, because we
sustain the Examiner's rejection of both claims 1 and 9 for the reasons
discussed above, we also sustain the Examiner's obviousness rejection of
claims 3, 5, 6, 12, 14, and 15 as unpatentable over Koloy, Edmiston, and De.
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SUMMARY
The Examiner's decision to reject claims 1-3, 5-7, 9, 11, 12, and 14--
18 is affirmed, and reversed as to claim 10.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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