11932729 (P.T.A.B. Aug. 6, 2014)

Ex Parte Cooke

Patent Trial and Appeal BoardAug 6, 2014

11932729 (P.T.A.B. Aug. 6, 2014)

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. 11/932,729 10/31/2007 Claude E. Cooke JR. 03.1001.10 2825 53189 7590 08/07/2014 Cooke Law Firm 2040 NORTH LOOP 336 WEST SUITE 123 CONROE, TX 77304 EXAMINER THOMPSON, KENNETH L ART UNIT PAPER NUMBER 3676 MAIL DATE DELIVERY MODE 08/07/2014 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 CLAUDE E. COOKE, JR. ________________ Appeal 2012-005993 Application 11/932,729 Technology Center 3600 ________________ Before: MICHAEL L. HOELTER, THOMAS F. SMEGAL, and BRANDON J. WARNER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claim 9.1 Br. 5. Claims 1-8, 10, and 11 have been canceled. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Claim 10 was also finally rejected in the last Office Action, but claim 9 was subsequently amended to include all the limitations of claim 10, with claim 10 then being canceled. Br. 5. There is no specific record of this amendment being entered, but the Examiner treats claim 9 as having been so amended and also specifically addresses the added language when rejecting claim 9. Ans. 3-6. We thus treat claim 9 as having been so amended. Appeal 2012-005993 Application 11/932,729 2 THE CLAIMED SUBJECT MATTER The disclosed subject matter “pertains to mechanical and chemical operations in wells.” Spec. para. 1. Sole claim 9 is reproduced below: 9. A device or part of the device for use in a well comprising a solid hydrolytically degradable polymer, the solid hydrolytically degradable polymer comprising a polyester, selected to decrease in strength a selected amount in a selected range of time in an aqueous environment in the well wherein the device is selected from the group consisting of a packer, bridge plug and cement retainer, wherein the decrease in strength releases the device in the well. REFERENCES RELIED ON BY THE EXAMINER Erbstoesser US 4,716,964 Jan. 5, 1988 Toon US 5,195,583 Mar. 23, 1993 THE REJECTION ON APPEAL Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Toon and Erbstoesser. Ans. 4. ANALYSIS The Examiner finds that Toon discloses a packer having virtually all the limitations of claim 9, including the use of a “slow to dissolve” material so as to delay the expansion or release of the packer in the well. Ans. 4. Additionally, the Examiner relies on Erbstoesser for teaching the “use of a dissolvable material (col. 2, lines 59-67) that is a solid (col. 4, lines 46-50) hydrolytically degradable (col. 4, lines 40-43) polymer comprising a polyester” to achieve this delayed operation. Ans. 5. The Examiner concludes that it would have been obvious “to make use of well known dissolvable materials disclosed by Toon et al. and Erbstoesser et al. on the Appeal 2012-005993 Application 11/932,729 3 basis of its suitability for the intended use to achieve predictable results.” Ans. 5. The Examiner further concludes that “one can vary the solubility characteristics of the polymer to thereby control delay of degradation as needed.” Ans. 5. Appellant does not dispute that Toon discloses a packer in a well whose swelling “can be delayed by placing a slow to dissolve material in ports 20.” Br. 9; see also Ans. 4 referencing Toon 9:12-19. Nor does Appellant dispute that Erbstoesser discloses the specific polymer that can be used in Toon. See Br. 9. Instead, Appellant contends that the combination of Toon and Erbstoesser “results in the device being deployed within the well, not released as claimed.” Br. 9. Appellant contends that “[i]n the context of the claims, the device is ‘released’ when the device or portion of the device that holds the device in the well is weakened so that it will no longer hold the device within the well.” Br. 9 referencing Spec. para. 30. Appellant’s Specification Paragraph 30 provides one “example” of the claimed invention that is directed to a release of the device to “facilitate retrieval,” and another, alternate “example” that discusses the ability of a device to “later be produced from a well.” Spec. para. 30. We agree that such examples are indicative of a “release” that permits removal of the device from the well, but we note that claim 9 is not written in such a specific manner. Instead, the language recited in claim 9 is “wherein the decrease in strength releases the device in the well” (emphasis added). There is no indication this recitation is limited only to “facilitate retrieval” or to permit the device to “later be produced from a well” (Spec. 30) or even “so that it will no longer hold the device within the well” (Br. 9). Further, Appeal 2012-005993 Application 11/932,729 4 there is no indication that a device as claimed cannot be released while still in the well. We are not inclined to read the claim language as narrowly as Appellant contends. See Br. 9. Rather, SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) provides guidance that [t]hough understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. “It is [Appellant’s] burden to precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellant always has the opportunity to amend the claims during prosecution, and broad interpretation by the Examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. See In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”). Here, the Examiner properly seeks to give “the broadest reasonable interpretation of the claims in view of the specification” by finding that “what is required is a combination of a device or part of a device that will degrade, undergo a decrease in strength and release” in the well. Ans. 5. In view of the above, Appellant’s contentions are not persuasive that the Examiner erred in finding that the combination of Toon and Erbstoesser Appeal 2012-005993 Application 11/932,729 5 teaches a material that undergoes “a decrease in strength until it eventually degrades thereby releasing the packer (a mechanical device) from a contracted state to a deployed state in a wellbore.” Ans. 5-6. We sustain the Examiner’s rejection of claim 9. DECISION The Examiner’s rejection of claim 9 is affirmed. 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 tkl