Ex Parte Buytaert et al

Patent Trial and Appeal Board

Aug 12, 2013

11828943 (P.T.A.B. Aug. 12, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/828,943 07/26/2007 Jean Buytaert SS.FI/0055 (FRANK-054) 1229
111690 7590 08/12/2013
Jeffrey E. Kubiak
The Kubiak Law Firm, PLLC
13201 Northwest Freeway, Suite 101
Houston, TX 77040
EXAMINER
ANDREWS, DAVID L
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
08/12/2013 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JEAN BUYTAERT and
EUGENE EDWARD MILLER
________________

Appeal 2011-008447
Application 11/828,943
Technology Center 3600
________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-008447
Application 11/828,943

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the final
rejection of claims 1, 2, 4-12 and 15-22. Br. 3. Claim 3 has been objected
to as being dependent upon a rejected base claim, but indicated to be
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claim. Ans. 2, Br. 3. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “is directed to an expandable centralizer
for centering an expandable casing string within a borehole.” Spec., para.
[0001]. Independent claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. A method of deploying an expandable bow spring
centralizer installed on an expandable casing string, restrained
in a collapsed configuration by one or more bands, and
deployable within a borehole to provide stand-off between the
expanded casing string and the borehole, the method
comprising the steps of:
expanding the expandable casing string within a targeted
interval of the borehole; and
rupturing the one or more bands to release the bow
springs.

REFERENCES RELIED ON BY THE EXAMINER
Gullet US 5,261,488 Nov. 16, 1993
Young US 2002/0139537 A1 Oct. 3, 2002
Trinder US 2005/0183864 A1 Aug. 25, 2005

Appeal 2011-008447
Application 11/828,943

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THE REJECTIONS ON APPEAL
1. Claims 1, 2, 5-12, 15, 16 and 20-22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Trinder and Gullet. Ans. 3.
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Trinder and Gullet.1 Ans. 5.
3. Claims 17-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Trinder, Gullet and Young. Ans. 6.

ANALYSIS
The rejection of claims 1, 2, 5-12, 15, 16 and 20-22
as being unpatentable over Trinder and Gullet
Appellants present separate arguments for (a) claim 1; (b) claims 2, 12
and 22; (c) claims 5, 6, 11 and 21; (d) claim 7; (e) claims 8, 9 and 16; (f)
claims 10 and 20; and (g) claim 15.2 Br. 20-34. Each separate grouping will
be addressed.
Claim 1
The Examiner primarily relies on Trinder for disclosing the
limitations of claim 1, including a centralizer having a plurality of bow
springs and an expandable collar. Ans. 3. However, the Examiner
acknowledges that Trinder “does not disclose one or more sacrificial bands

1 Presumably this rejection stands separate from the immediately-above
rejection due to an error in the Final office action which mis-identified
Trinder’s publication number. Appellants correctly address Trinder in their
Brief and not the mis-identified publication number. Br. 34. The Examiner
acknowledges this mis-identification at Ans. 11.
2 In this portion of Appellants’ Brief, Appellants also argue claim 19, but
claim 19 was rejected under Trinder, Gullet and Young and hence will be
addressed elsewhere in this Decision.
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for restraining the bow springs.” Ans. 4. For this limitation, the Examiner
relies on Gullet for disclosing a centralizer having “one or more bands (14)
for restraining bow springs in a collapsed configuration and for being
mechanically ruptured (col. 5, lines 18-22).” Ans. 4. Gullet identifies a
problem with centralizers having extending or projecting springs (such as
Trinder’s springs and in contrast to restraining springs in a collapsed
configuration), in that unstressed or projecting springs “must be forced
through the housing 8 and the piping head 6” and can “catch” such that they
may “prevent or impede” movement within the borehole. Gullet 5:7-15,
1:35-57. The Examiner concludes that it would have been obvious “to
provide the centralizer of Trinder et al. with the retaining band of Gullet et
al. in order to provide a centralizer which can be easily moved and deployed
when desired (Gullet et al., col. 5, lines 7-15).” Ans. 5. The Examiner also
finds the limitations of claim 1 obvious “since the combination of prior art
elements according to known methods to yield predictable results is
considered obvious to one of ordinary skill.” Ans. 5.
Appellants dispute the Examiner’s findings and conclusions on
several grounds. Initially, Appellants dispute the Examiner’s meaning
assigned to the claim term “deploying” in the “limitation of ‘deploying an
expandable bow spring centralizer’” as stated in the Preamble of claim 1.
Br. 17. Appellants contend that this term “means moving the bow springs of
a bow-spring centralizer from a collapsed configuration to a configuration
that provides stand-off.” Br. 17; see also 19. Appellants distinguish
“deploying” from the term “expanding” which “means that a diameter of the
collars is increased.” Br. 19-20. According to Appellants, “deploying”
pertains to movement of the bow spring component of the centralizer while
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“expanding” pertains to an increase in the diameter of the collar component
of the centralizer. Br. 19-20.
Appellants do not cite to such an explicit definition of “deploying” or
“expanding” in the Specification but Appellants provide numerous
references therein of the use of these terms (and their variants) to support
their contention. Br. 18-19. The passages cited employ the term
“deploying” (or its variants) in association with both the expandable
centralizer as a whole as well as specifically in association with the
centralizer’s bow spring component. Br. 18, 19. Further, the passages cited
employ the term “expanding” (or its variants) in association with both the
centralizer as a whole as well as with respect to the casing string. Br. 18-19.
As a consequence, Appellants’ referenced passages do not support
Appellants’ limited construction of either of these terms.
However, even accepting Appellants’ interpretation of the term
“deploying” as pertaining only to the centralizer’s bow springs and not to its
collars, such an interpretation would still be met by the Examiner’s
combination of Trinder and Gullet since Gullet describes bands that restrain
the bow springs in a collapsed configuration before they are released (Gullet
4:53-57, 5:16-25) and as such, the bow springs of this combination “are
moved from a collapsed configuration to a configuration that provides stand-
off (i.e., a deployed configuration)” in accordance with Appellants’
definition. Br. 19, see also 17.
Further, the Examiner “disagrees with [Appellants’] argument because
the common meaning of deploying is to expand or spread out. The examiner
finds no disclosure which necessitates ‘deploying’ as limited to expanding
only the bow springs and not the entire device including the bow springs and
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collars of Trinder et al., as argued.” Ans. 6. The Preamble of claim 1 recites
“[a] method of deploying an expandable bow spring centralizer.”
Appellants’ Specification at paragraph [0042] states that “[t]he expandable
centralizer 10 comprises a pair of opposed expandable collars 11 and a
plurality of bow springs 14, each coupled at each end to a collar 11.” Hence,
Appellants’ Specification provides instruction that the “expandable
centralizer” comprises both collars and bow springs. The Specification does
not describe that the bow springs 14 are not “expandable.” It thus follows
that the above Claim Preamble is directed to “deploying” both a collar
component and a bow spring component of the claimed expandable
centralizer. As such, we do not find the Examiner’s understanding of this
term (i.e., meaning to expand or spread out and to be applicable to both the
bow spring and the collar components of the centralizer) to be inconsistent
with Appellants’ Specification or to be in error. Appellants’ contentions
regarding the above claim terms are not persuasive.
Appellants also contend that “Trinder does not disclose deploying an
expandable bow spring centralizer.” Br. 20-21. Here, there is no dispute by
Appellants that “Trinder discloses an expandable centralizer 100.” Br. 12.
Instead, Appellants contend that the bow springs of Trinder’s centralizer are
not deployed or expanded and further, that Trinder fails to teach “the
restraint of bow springs.” Br. 20-21. Appellants are not arguing the
Examiner’s rejection which relies, instead, on Gullet for disclosing “one or
more bands (14) for restraining bow springs in a collapsed configuration and
for being mechanically ruptured” so that they expand outwardly. Ans. 4
referencing Gullet 5:18-22. Appellants’ contention is not persuasive.
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Appellants further contend that “Trinder discloses two embodiments
that are distinct and incompatible” and that “Trinder makes no suggestion to
combine any of the features of the two embodiments.” Br. 21, see also 23.
More specifically, Appellants contend that “[t]he rejection is based upon a
combination of incompatible embodiments disclosed by Trinder.” Br. 23-
24. First, Appellants do not indicate where the Examiner asserts a
combination of Trinder’s two embodiments. In fact, the Examiner clearly
states that “[t]he examiner only relies on the second embodiment (i.e. as
shown in figs 3 and 4).” Ans. 7. The citation relied on by Appellants in
asserting the Examiner’s reference to Trinder’s first embodiment is with
respect to Trinder paragraph [0059]. Br. 21, 24; Ans. 4. While the
Examiner does reference this paragraph, the Examiner also states that “this
portion is equally as relevant to the second embodiment since one of
ordinary skill in the art would recognize the description of operation within
¶59 to be applicable to both embodiments.” Ans. 7. Trinder paragraph
[0059], among other teachings, is directed to positioning the stabilizer “at a
desired location” after which the stabilizer “is deformed and expanded” and
the equipment or tools that may be used to accomplish such deformation or
expansion. We agree with the Examiner that this portion of Trinder’s
Paragraph [0059] is relevant to both embodiments, and not solely the first
embodiment as perceived by Appellants. Appellants’ contention is not
persuasive.
When Appellants address Trinder’s second embodiment, Appellants
contend that Trinder’s bow springs “are always active (deployed) and are
never collapsed and restrained in a collapsed mode.” Br. 22 referencing
Trinder para. [0065]; see also Br. 23. While it may be the case that
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Trinder’s bow springs are always deployed as Appellants assert, the
Examiner does not rely on Trinder for teaching bow springs that are
collapsed and restrained in a collapsed mode, instead, the Examiner relies on
Gullet for this teaching. Ans. 4. Accordingly, Appellants’ contentions are
not persuasive.
Appellants also contend that “Gullet does not teach ‘expansion of the
stabilizer.’” Br. 24-25. Appellants focus on two sets of reasons why this is
the case. Br. 25. First, Appellants contend that Gullet teaches a band that is
softened by acid injected into the borehole “‘to an extent that the ends of the
bands separate under the spring biasing force of the spring strips 12 to
release the band.’” Br. 25 citing Gullet 5:16-22. Hence “Gullet’s band 14
does not fail by expansion of the casing, but rather the band is released by
chemically dissolving and softening.” Br. 25. More specifically, Appellants
contend that “Gullet does not teach deploying the bow springs by
expandably breaking or rupturing the band.” Br. 25. There are multiple
issues with Appellants’ first reason. First, the relevant limitation in claim 1
is “rupturing the one or more bands to release the bow springs.” There is no
requirement in claim 1 as to how the one or more bands are to be ruptured;
and more specifically, there is no claim requirement, as Appellants assert,
that the bands “fail by expansion of the casing.” Br. 25. Second, Trinder,
not Gullet, is relied on by the Examiner for teaching casing expansion. Ans.
4. Third, Appellants attempt to persuade the Board that Gullet’s disclosure
of chemical softening resulting in separation “under the spring biasing force
of the spring strips 12” (Gullet 5:16-22) fails to meet the claim 1 limitation
of “rupturing the one or more bands to release the bow springs” is not
persuasive. Fourth, Appellants also assert that Gullet’s chemical softening
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“is not a teaching of ‘predisposing a band to fail at a targeted location.’”
Br. 25 (emphasis added). More precisely, the claim 1 limitation is question
is directed to being “within a targeted interval of the borehole” and Gullet
clearly states that “[t]he casing string 3 is moved to a required position in the
bore 2.” Gullet 5:14-15. Furthermore, Trinder’s Paragraph [0059], as
discussed supra, provides a discussion of positioning the stabilizer “at a
desired location” after which the stabilizer “is deformed and expanded.”
Hence, Appellants’ first set of reasons are not persuasive.
Regarding Appellants’ second set of reasons, Appellants focus once
again on the fact that “Gullet does not teach ‘expanding the expandable
casing string’” (Br. 25) which, as previously indicated, is taught by Trinder,
not Gullet. Ans. 4. On this point the Examiner reiterates that “[t]he
examiner agrees that Gullet does not disclose an expandable casing string,
which is the reason for the combination with Trinder et al., who does
disclose a centralizer on an expandable casing string.” Ans. 8 (emphasis
added). Appellants also re-assert that “it is the chemical dissolving and
softening of Gullet’s titanium link 15 that releases the ends of Gullet’s band
14” but this ignores Appellants’ own acknowledgment that such softening
occurs “to an extent that the ends of the bands separate under the spring
biasing force of the spring strips 12 to release the band.” Br. 25-26 citing
Gullet 5:16-22. In essence, Appellants appear to disregard their own
acknowledgment of the final mechanical breakage of Gullet’s bands. See
Br. 25 and Ans. 8. Accordingly, Appellants’ contentions are not persuasive.
Appellants also contend that “Gullet does not teach ‘rupturing the one
or more bands to release the bow springs.’” Br. 26-27. Appellants’ reasons
relied on under this heading are a repeat of those previously addressed.
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They will not be repeated here. Suffice it to say that Appellants’ arguments
are not found to be persuasive for the reasons previously stated.
While the above is an effort to address each of Appellants’
contentions, we are also guided by our reviewing court that “[n]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
For this additional reason, Appellants’ contentions supra are not persuasive.
Appellants further contend that “[t]he combination of Trinder and
Gullet does not provide that the band is ruptured by expanding the
expandable casing.” Br. 27. The need for the rupture to occur by expanding
the expandable casing is a limitation found in independent claims 10 and 20,
not claim 1. Nevertheless, the Examiner finds that “[o]ne of ordinary skill
would recognize that if the spring strip force of Gullet is enough to rupture
the softened link on the band th[e]n a mechanical expander would certainly
provide enough force to rupture the weakened link.” Ans. 9. To consider
otherwise, i.e., to consider the band’s hoop strength to be greater than the
expansion force of the expander, is opposite the intended purpose of both
Trinder and Gullet each of which describe a borehole centralizer employing
expanded springs. See Trinder Abstract and Gullet Abstract. As the
Examiner is employing the teachings of Trinder and Gullet in accordance
with their intended purpose, the Examiner’s above finding is not considered
to be unreasonable.
Appellants do not dispute this finding but instead repeat their
contentions regarding (a) Gullet’s “dissolving” of the band, (b) a difference
between “deploy” and “expanding,” and (c) Trinder’s failure to teach
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deploying bow springs. Br. 28. These contentions by Appellants have all
been previously discussed and deemed not persuasive. Appellants also
assert a hypothetical as to what material “the band could be made of” rather
than address Gullet’s explicit softened link material. Br. 29. We are not
persuaded by Appellants’ hypothetical over Gullet’s actual teachings.
Appellants also contend that “[t]he proposed modification would
render the prior art invention being modified unsatisfactory for its intended
purpose” and further that “[t]he proposed modification of the prior art would
change the principle of operation of the prior art invention being modified.”
Br. 29. Here, Appellants address the principle of operation of Gullet (Br.
29-30) but the Examiner finds that Appellants’ “argument is not convincing
because the Gullet [reference] is not the reference which was to be modified
but rather is the secondary reference.” Ans. 9. We agree that the
Examiner’s rejection is stated as being “to provide the centralizer of Trinder
et al. with the retaining band of Gullet et al.,” not vice versa. Ans. 5.
Appellants’ contentions are not persuasive.
Accordingly, and in view of the record presented, we are not
persuaded by Appellants’ contentions and as such, we sustain the
Examiner’s rejection of claim 1 as being obvious over Trinder and Gullet.
Claim 2
Claim 2 depends from claim 1 and includes an additional limitation
directed to the ductile nature of the band material. The Examiner relies on
the teachings of Trinder and Gullet for such disclosure. Ans. 3-5, 9-10.
Appellants do not argue the lack of any teaching of this additional limitation,
but instead address Gullet’s failure to teach a band “that restrains the bow
springs in the collapsed configuration” (see Br. 26) and further that
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“[a]ccording to the teachings of Gullet, there is no reason for the band to
break or rupture.” Br. 30. As Appellants repeat arguments directed to the
parent claim, and do not provide an argument directed to the Examiner’s
additional rejection of this additional limitation, we do not find Appellants’
arguments persuasive. We sustain the Examiner’s rejection of claim 2.
Claims 5, 6, 11 and 21
Each of these dependent claims provide for an additional limitation to
the effect that one or more of the bands have a portion that is “at least one of
milled, channeled, notched, necked and heat treated.” In the matter before
us, Appellants’ Specification provides some guidance as to the meaning of
“heat treated.” Here, heat treating is referred to as being metallurgically
altered “to relieve stresses imparted by the laser cutting or bowing process.”
Spec. para. [0028], see also [003], [0011] and [0027]. It is clear that these
are features associated with treatment of the band prior to its insertion in the
bore hole and are not features that occur in the bore hole. In other words,
the band is already in a heat-treated condition at the time that is inserted into
the bore hole.
The Examiner relies on Gullet for such teachings and more
specifically Gullet’s melting or dissolution of the band’s fuse “by the supply
of thermal energy by geothermal heat” from the borehole. Gullet 8:39-44,
Ans. 10. Appellants contend that this is “an improper interpretation of ‘heat
treating’” and that the Examiner’s rejection “appears to equate ‘heat
treating’ with simply ‘heating.’” Br. 30-31. We agree with Appellants’
assertion that the Examiner does appear to be equating the two and the
Examiner does not otherwise provide any indication regarding a heat-
treating metallurgical process in the borehole but instead only addresses the
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heat naturally occurring in the borehole. Accordingly, we do not sustain the
Examiner’s rejection of claims 5, 6, 11 and 21. Nor do we sustain the
Examiner’s rejection of claims 7-9 and 15-19 which also incorporate this
“heat treated” limitation.
Claims 10 and 20
Independent claims 10 and 20 are each directed to an expandable
centralizer and recite similar limitations to those discussed supra with
respect to claim 1. As such, “Appellant reasserts the arguments made above
with respect to claim 1.” Br. 32. In short, Appellants repeat arguments
previously made and addressed which, for the reasons previously indicated,
are not persuasive. Appellants also contend that Gullet’s bands are not
“‘predisposed to rupture upon expansion of the expandable casing string’”
because “[t]he casing string is expandable without rupturing.” Br. 33.
However, just because the casing string is expandable without rupturing
does not diminish the fact that Gullet discloses a band that is ruptured, as
called for by claims 10 and 20. Gullet 5:16-25. Accordingly, we do not find
Appellants’ contentions persuasive and as such, we sustain the Examiner’s
rejection of claims 10 and 20.
Claims 12 and 22
Claim 12 depends from claim 10 and claim 22 depends from claim 20.
Each of these claims include an additional limitation directed to the ductile
nature of the band material. As above with respect to claim 2, the Examiner
relies on the teachings of Trinder and Gullet for such disclosure. Ans. 3-5,
9-10. Appellants do not argue the lack of any teaching of this additional
limitation, but instead address Gullet’s failure to teach a band “that restrains
the bow springs in the collapsed configuration” (see Br. 26) and further that
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“[a]ccording to the teachings of Gullet, there is no reason for the band to
break or rupture.” Br. 30. As Appellants repeat arguments directed to
parent claims 10 and 20, and do not provide an argument directed to the
Examiner’s additional rejection of this additional limitation, we do not find
Appellants’ arguments persuasive. We sustain the Examiner’s rejection of
claims 12 and 22.

The rejection of claim 4
as being unpatentable over Trinder and Gullet
Appellants properly address the rejection of claim 4 in view of
Trinder and Gullet even though the Examiner initially mis-identified
Trinder’s numeric publication number (see note 1), which the Examiner
rectified at Ans. 11. Nevertheless, Appellants assert that as claim 4 depends
from claim 1, it “is asserted to be patentable for at least the same reasons as
claim 1.” Br. 35. As indicated supra, we do not agree with Appellants’
contentions regarding claim 1 and as such, we likewise sustain the
Examiner’s rejection of claim 4.

The rejection of claims 17-19
as being unpatentable over Trinder, Gullet and Young
Claims 17-19 each depend indirectly from claim 7 and Young does
not cure the deficiencies of the rejection of claim 7.

DECISION
The Examiner’s rejections of claims 1, 2, 4, 10, 12, 20 and 22 are
affirmed.
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The Examiner’s rejections of claims 5-9, 11, 15-19 and 21 are
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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