Ex Parte ALLISON et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201612870476 (P.T.A.B. Feb. 23, 2016) Copy Citation 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interest is Halliburton Energy Services, Inc. Appeal Br. 3 (filed July 03, 2013). 2 Claims 4, 8, 13, and 19 have been withdrawn.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 2 Appeal2014-000845 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. 3 Appeal2014-000845 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 4 Appeal2014-000845 Application 12/870,476 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 5 Appeal2014-000845 Application 12/870,476 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 6 Appeal2014-000845 Application 12/870,476 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 7 Appeal2014-000845 Application 12/870,476 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 8 Appeal2014-000845 Application 12/870,476 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. 9 Appeal2014-000845 Application 12/870,476 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 10 Copy with citationCopy as parenthetical citation