Ex Parte Cooke

Board of Patent Appeals and Interferences

Apr 26, 2012

11774819 (B.P.A.I. Apr. 26, 2012)

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.
11/774,819 07/09/2007 Claude E. Cooke JR. 03.1001.09 3949
53189 7590 04/27/2012
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
04/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLAUDE E. COOKE JR.
____________

Appeal 2012-001511
Application 11/774,819
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Claude E. Cooke Jr. (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1, 3-10, and 21-28. Appellant
cancelled claim 2. The Examiner withdrew claims 11-20 from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-001511
Application 11/774,819

2
The Claimed Subject Matter
The claimed subject matter is directed to a sand control screen or
slotted well liner for use in wellbores. Spec. 1, para. [0001]. There are three
independent claims (i.e., claims 1, 8, and 21), reproduced below, with italics
added, which are representative of the subject matter on appeal.
1. A sand control screen having a solid
hydrolytically degradable polymeric coating, the
polymer comprising a polyester, the coating
covering the screen to initially prevent entry of
particles or fluid flow into or out of the screen.

8. A sand control screen or slotted well liner
having a base pipe or mandrel with apertures
therein plugged with a solid hydrolytically
degradable polymer, the polymer comprising a
polyester.

21. A slotted well liner having a solid
hydrolytically degradable polymeric coating, the
polymer comprising a polyester, the coating
covering the slotted well liner to initially prevent
entry of particles or fluid flow into or out of the
slotted well liner.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 1, 3-10, and 21-28 are rejected under 35 U.S.C. § 102(b) as
anticipated by Heath (WO 01/94744 A1, published Dec. 13, 2001).1

1 The Examiner erroneously states the first ground of rejection as “[c]laims
1, 3-10, 21-26; 27 and 28 (as best understood) are rejected under 35 U.S.C.
102(b) as anticipated by, or in the alternative, under 35 U.S.C. 103(a) as
being unpatentable over Heath, WO 01/94744 in view of Howard et al., U.S.
3,216,497.” However, we assume that the Examiner meant to set forth a
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Application 11/774,819

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Claims 1, 3-10, and 21-28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Heath and Howard (US 3,216,497, issued Nov. 9, 1965).
Claims 1 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kilaas (US 2002/0020527 A1, published Feb. 1, 2002) and Howard.

OPINION
Anticipation based on Heath
The Examiner finds that Heath discloses “solid degradable
polymerically coated capsules (p. 13, 2nd para) inserted into a prepacked or
plugged screen (p.13, 3rd para) to release chemicals,” wherein the polyermic
coating material includes either polyester or polylactic acid (p. 4, 3rd para.).
Ans. 5. However, the Examiner notes that Heath “does not specifically state
the screen exterior is coated.” Id.
Appellant contends that although Heath discloses a polymer which
releases a chemical and which may be put in a prepacked screen, there is no
teaching of the polymer coating the prepacked screen to prevent flow
through the screen, and no teaching or suggestion to place the material on
the surface of a screen or slotted liner. App. Br. 10. Appellant also contends
that Heath “does not disclose a coating that covers the screen to prevent
entry of particles or fluid flow into or out of the screen” and Appellant
specifically notes that the Examiner admits that Heath’s screen exterior is
not coated. Reply Br. 1.

rejection of the claims under 35 U.S.C. § 102(b) based upon Heath, and a
separate rejection of the claims under 35 U.S.C. § 103(a) based upon Heath
and Howard.
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Application 11/774,819

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We agree with Appellant that none of independent claims 1, 8, and 21
are anticipated by Heath. “A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros, Inc.. v. Union Oil
Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Here, both claims 1 and 21
require “a solid hydrolytically degradable polymeric coating.” Since the
Examiner has admitted that Heath does not disclose that the exterior of the
prepacked screen is coated, Heath does not anticipate claims 1 and 21.
Turning to claim 8, we note that there is no requirement for a coating,
but rather the screen or well liner must include “a base pipe or mandrel with
apertures therein plugged with a solid hydrolytically degradable polymer.”
We are persuaded by Appellant’s contention that Heath has no teaching or
suggestion to place the polymer on the surface of the pre-packed screen or
slotted well liner. Although the Examiner indicates that Heath’s
polymerically coated capsules are inserted into the pre-packed or “plugged”
screen at the second and third paragraphs on page 13, we do not discern
anything in those two paragraphs which indicates that the apertures of the
pre-packed screen are “plugged” with the polymeric material of the coated
capsules.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 8, and 21, nor claims 2-7, 9, 10, and 22-28
dependent thereon, under 35 U.S.C. § 102(b) as anticipated by Heath.
Obviousness based on Heath and Howard
The Examiner makes the same findings as discussed supra with
respect to anticipation based on Heath; however, the Examiner also finds
that Howard discloses a screen 26 (see Fig. 3 and col. 3, l. 75 through col. 4,
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Application 11/774,819

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l. 2) or a slotted well liner having a polyvinyl alcohol coating, which is a
water-soluble synthetic polymer (see col. 4, ll. 14-19) to temporarily seal the
screen. Ans. 5. The Examiner concludes that it would have been obvious to
one of ordinary skill in the art “to apply the same material as a coating as
taught by Howard et al. to a screen for delayed permeability adjustment to
achieve predictable results.” Id.
Appellant contends that while “Howard discloses a water-soluble
polymer for a coating[,] . . . neither Heath nor Howard disclose a temporary
coating formed from a polymer that is degradable by a chemical reaction
(hydrolysis),” because “degradation is a chemical phenomenon; erosion
encompasses physical phenomena, such as dissolution and diffusion.” App.
Br. 10.
Howard discloses a gravel-packing method (Title) and in Figure 3,
illustrates a gravel-retaining screen (col. 2, l. 26). The slotted or perforated
screen 26 extends above a check valve assembly 22 to a point just above
upper perforations 18 to prevent the flow of gravel into the well. Col.2, ll.
55-58. The screen 26 may be woven wire, wound wire, or a slotted tubular
sleeve of any suitable type ordinarily used to support a gravel pack. Col. 3,
l. 75 to col. 4, l.2. A temporary sealing sleeve 29 is produced by coating the
screen 26 with a material which can be dissolved in oil, water, or other
solvent. Col. 4, ll. 5-9. When the screen 26 will be contacted with oil, the
coating should be a water-soluble material such as sugar, starch, polyvinyl
alcohol, sodium chloride, or other similar compound which can be
crystallized on the screen and then subsequently dissolved with water. Col.
4, ll. 14-19.
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Application 11/774,819

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We are persuaded by Appellant’s contention, because the Examiner’s
proposed modification of Heath’s prepacked screen with the polyvinyl
alcohol coating as taught by Howard does not meet the claim language of a
“hydrolytically degradable polymer.” Since the patent Specification neither
assigns nor suggests a particular definition to the word “hydrolytically,” in
determining the ordinary and customary meaning of the claim word
“hydrolytically” as viewed by a person of ordinary skill in the art, it is
appropriate to consult a general dictionary definition of the word
“hydrolytically” for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1348 (Fed. Cir. 2010).
The ordinary and customary meaning of the word “hydrolytic” is “of,
relating to, or causing hydrolysis” and the ordinary and customary meaning
of the word “hydrolysis” is “a chemical reaction of water in which a bond in
the reactant other than water is split and hydrogen and hydroxyl are added
with the formation usu. of two or more new compounds, some types of
hydration however often being included » hydrolysis of a salt to an acid and
a base « » hydrolysis of an ester to an acid and an alcohol «.”2 Thus, a
person of ordinary skill in the art would understand the claim term of “a
solid hydrolytically degradable polymer” to mean a solid polymer3 whose

2 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED,
Copyright 1993, Merriam-Webster, Incorporated (last accessed at
http://lionreference.chadwyck.com on April 24, 2012).
3 An ordinary and customary meaning of the term “polymer” is “a natural or
synthetic chemical compound or mixture of compounds formed by
polymerization and consisting essentially of repeating structural units.”
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY, UNABRIDGED,
Copyright 1993, Merriam-Webster, Incorporated (last accessed at
http://lionreference.chadwyck.com on April 24, 2012). Emphasis added.
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Application 11/774,819

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molecular chains degrade in water by a chemical reaction with the water to
produce other compounds, i.e., smaller molecular structural units such as
oligomers and monomers. Although Howard’s polyvinyl alcohol coating
material is disclosed to dissolve in water, there is no evidence that the
polyvinyl alcohol reaction with water produces compounds having smaller
structural molecular units (oligomers or monomers) so as to meet the claim
term of a “hydrolytically degradable polymer.”
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 8, and 21, nor claims 2-7, 9, 10, and 22-28 dependent
thereon, under 35 U.S.C. § 103(a) as unpatentable over Heath and Howard.
Obviousness based on Kilaas and Howard
The Examiner finds that Kilaas substantially discloses the subject
matter of independent claims 1 and 8. Ans. 6. More particularly, the
Examiner finds that Kilaas discloses solid hydrophilic polymers (see para.
[0052]) coating screen apertures 10 (see para. [0031]) including esters (see
para. [0050]), but does not specifically state that the screen exterior is
coated. Id. The Examiner makes the same findings about Howard as
discussed above with respect to obviousness based on Heath and Howard.
Id. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art “to apply the material as a coating as taught by
Howard et al. to a screen for a delayed permeability adjustment to achieve
predictable results.” Id.
Appellant contends that Kilaas fails to teach a hydrolytically
degradable polymeric coating on a screen. App. Br. 11. Appellant also
contends that the Examiner’s combination of Kilaas with Howard may
produce a screen or slotted liner having a water-soluble polyvinyl alcohol
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Application 11/774,819

8
coating, but the water-soluble coating is removed because it dissolves, not
by degradation from a chemical reaction with water. Id. Thus, Appellant
further contends that “[t]here is no reasonable argument to combine the
Kilaas patent and the Howard patent and arrive at [Appellant’s] invention.”
Id.
We agree. The Examiner proposes modifying Kilaas’ screen
apertures 10 to be coated with Howard’s polyvinyl alchohol. Ans. 6. For
the same reasons as discussed supra with respect to obviousness based on
Heath and Howard, the Examiner has not pointed to any evidence that
Howard’s water soluble polyvinyl alcohol coating material constitutes a
“hydrolytically degradable polymer,” that is, reacts with water to form other
compounds, i.e., smaller molecular structural units such as oligomers and
monomers.
As such, we do not sustain the Examiner’s rejection of independent
claims 1 and 8 under 35 U.S.C. § 103(a) as unpatentable over Kilaas and
Howard.

DECISION
We reverse the Examiner’s decision to reject claims 1, 3-10, and 21-
28.

REVERSED

MP