Ex Parte Duphorne

Patent Trial and Appeal Board

Aug 7, 2013

12802675 (P.T.A.B. Aug. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DARIN H. DUPHORNE
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Appeal 2011-007971
Application 12/802,675
Technology Center 3600
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Before: JOHN C. KERINS, WILLIAM A. CAPP and
BEVERLY M. BUNTING, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007971
Application 12/802,675

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STATEMENT OF THE CASE

Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 9, 12, 16, 18, 19 and 23 as anticipated under 35
U.S.C. § 102(b) by McKeachnie (US 2006/0131031 A1, pub. Jan 22, 2006)
and the rejection of claims 3-8, 14, 15, 17, 21, 22, 24 and 25 as unpatentable
under 35 U.S.C. § 103(a) over McKeachnie, and the rejection of claims 1, 9
and 10 on the ground of double patenting. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s invention relates to downhole devices for wellbores.
Spec. 2. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A downhole device comprising:
an immobile structural component, the
immobile structural component comprising a first
sacrificial material;
a first configuration in which the downhole
device is capable of performing a first operation;
and
a second configuration in which the
downhole device is capable of performing a
second operation, the second configuration being
formed after removal of at least a portion of the
sacrificial material from the immobile structural
component.

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OPINION
Anticipation by McKeachnie
Claim 1
The Examiner finds that McKeachnie discloses all of the elements of
claim 1. Ans. 3-4. In particular, the Examiner finds that that the ball seats
and mandrel of McKeachnie are immobile. Ans. 3. The Examiner further
finds that the balls and ball seats are comprised of a sacrificial material such
that the downhole device assumes a first configuration that is capable of
performing a first operation before the sacrificial material is dissolved. Id.
The Examiner further finds that the device assumes a second configuration
that is capable of performing a second operation after the ball and ball seats
are dissolved. Ans. 3, citing McKeachnie, para [0037].
Appellant traverses the Examiner’s rejection by arguing that
McKeachnie does not anticipate claim 1 because upper ball 206 and lower
ball 208 are movable. App. Br. 16-18. Appellant acknowledges that
paragraph [0037] of McKeachnie discloses that ball seats can be formed of a
sacrificial material, however, Appellant contends that McKeachnie fails to
teach that disintegration of the ball seats results in a device that can perform
a second operation. App. Br. 18.
The Examiner responds by stating that McKeachnie assumes a first
configuration that performs a first operation (i.e. a bridge plug) before the
balls and ball seats are disintegrated. Ans. 6. The Examiner further
responds by stating that McKeachnie assumes a second configuration that
performs a second operation (i.e., fluid flow) after the balls and ball seats are
dissolved. Id. Appellant replies that McKeachnie’s disintegratable ball
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seats are situated on a slidable sleeve and, therefore, not immobile. Reply
Br. 3.
McKeachnie discloses that the downhole device radially expands to
seal the tubular string. McKeachnie, para [0025]. It does not appear that
mandrel 201 and ball seats 209, 210 are cable of movement after the tubular
string is sealed. Although the ball seats may be disposed on a sleeve, we do
not interpret McKeachnie as providing for the ball seat sleeve to undergo
motion after the tool is assembled and during operation of the downhole
device prior to disintegration of the ball seats. See Paragraph [0037]. Thus,
we agree with the Examiner that they constitute immobile components.
Figure 2 of McKeachnie depicts a downhole device with a mandrel
201, upper and low ball seats 209, 210, and upper and lower balls 206, 208.
The accompanying disclosure in McKeachnie’s specification teaches that the
balls and ball seats initially function as bridge plug and frac plug. See
McKeachnie, para [0027]. McKeachnie further discloses that both balls
(206 and 208) may be constructed of disintegratable material. See
McKeachnie, para [0032]. A person of ordinary skill in the art would
understand that, upon disintegration of both balls, the downhole tool would
assume the configuration of a fluid flow path, instead of a bridge and/or frac
plug. A person of ordinary skill would also understand that disintegration of
ball seats 209 and 210 in conjunction with disintegration of balls 206 and
208 would similarly contribute to a fluid flow configuration.
The Examiner’s fact findings are supported by a preponderance of the
evidence and, accordingly, we sustain the anticipation rejection of claim 1.
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Claim 2
Claim 2 depends from claim 1 and further requires that the immobile
component comprises a first portion composed of a sacrificial material.
Clms. App’x. Upon removal of such material, the downhole device assumes
a second configuration. Id.
The Examiner finds that the ball seats of McKeachnie are immobile
and composed of a sacrificial material. Ans. 4. Appellant traverses the
rejection by arguing that McKeachnie does not disclose an immobile
structure with two distinct portions, one of which comprises a sacrificial
material. App. Br. 19. The Examiner responds by reiterating that the ball
seats are immobile and disintegratable. Ans. 7.
McKeachnie discloses that the ball seats may be composed of
disintegratable material. See Para. [0037]; see also discussion of claim 1
supra and discussion of claim 12 infra. The Examiner’s findings are
supported by a preponderance of the evidence and, accordingly, we sustain
the rejection of claim 2.
Claims 9 and 16
Claims 9 and 16 each depend directly from claim 1. Clms. App’x.
The Examiner finds that the dependent limitations in each respective claim
are present in McKeachnie. Ans. 3-4. Appellant does not separately argue
for the patentability of claims 9 or 16 apart from the arguments previously
advanced with respect to claim 1. App. Br. 20, 22. Claims 9 and 16 fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim12
Claim 12 depends from claim 1 and adds the limitation: “wherein the
second portion comprises a non-sacrificial material.” Clms. App’x. The
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Examiner finds that McKeachnie’s mandrel is not required to be made of a
dissolvable material. Ans. 4.
Appellant traverses the rejection of claim 12 by arguing that
McKeachnie does not teach an immobile structure comprising two distinct
portions, one sacrificial and another non-sacrificial. App. Br. 19-20. This
argument is unpersuasive as it never meets the substance of the Examiner’s
rejection, which is directed to a first portion of McKeachnie that
disintegrates (the ball seat) and a second portion that does not disintegrate
(the mandrel).
McKeachnie discloses a downhole device with a mandrel 201 and
associated ball seats 209, 210. See Para. [0025], [0027]. McKeachnie
further teaches that the ball seats may be formed on the mandrel itself or on
an annular sleeve. See Para. [0037]. McKeachnie further teaches that the
ball seats may be composed of disintegratable material. Id. Thus,
McKeachnie discloses an immobile structural component (the mandrel
together with associated ball seats) with a first portion that is sacrificial (the
ball seats) and a second portion (the mandrel) this is non-sacrificial.
We sustain the rejection of claim 12.
Claim 18
Claim 18 depends from claim 1 and adds the limitation: “wherein the
second operation is different from the first operation.” Clms. App’x. The
Examiner finds that the second operation of McKeachnie, a flow passage, is
different from the first operation, a bridge plug. Ans. 4. Appellant traverses
the rejection, arguing that McKeachnie is silent as to multiple operations.
Ans. 22.
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McKeachnie discloses two operations: (1) a bridge plug; and (2) a
flow passage. McKeachnie, para [0025], [0033].1 The Examiner’s findings
are supported by a preponderance of the evidence and we sustain the
rejection of claim 18.
Claim 19
Claim 19 is a method claim that is substantially the same in scope as
claim 1. Clms. App’x. The Examiner finds that all of the limitations of the
claim are satisfied by McKeachnie. Ans. 3. In traversing the rejection,
Appellant asserts substantially the same argument that we have previously
addressed above with respect to claim 1. We sustain the rejection of claim
19 for the same reason as with claim 1.
Claim 23
Claim 23 depends from claim 19 and adds the limitation: “wherein
step (c) is performed by contacting the sacrificial material with a fluid.”
Clms. App’x. The Examiner finds that the limitation is met by McKeachnie.
Ans. 4. Appellant does not separately argue for the patentability of claim 23
apart from the arguments previously advanced with respect to claim 19.
App. Br. 20, 22. Claim 23 falls with claim 19. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Unpatentability over McKeachnie
Claims 3-8
Claim 3 depends from claim 1 and adds the limitation: “wherein the
second portion comprises a second sacrificial material.” Clms. App’x. The

1 “. . . the balls will disintegrate and provide an unobstructed flow path
through the plug for production fluid going toward the surface.” para.
[0033].
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Examiner finds that McKeachnie discloses all of the limitations of claim 3
except for indicating that the mandrel is made from a sacrificial material.
Ans. 4-5. The Examiner relies on paragraph [0037] as disclosing that “any
number” of components of McKeachnie’s bridge plug can be made from a
dissolvable material. Ans. 5. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time of the
invention to have made the mandrel of a sacrificial material as this would
have achieved the predictable result of being able to completely remove the
bridge plug from the well bore when no longer needed. Id.
Appellant traverses the rejection by arguing that the Examiner has
failed to make out a prima facie case of unpatentability. App. Br. 27. We
agree. Paragraph [0037] of McKeachnie identifies a number of components
that can be composed of a disintegratable material, however, the mandrel is
not listed among them. The mandrel is a large and significant component of
McKeachnie’s device and it serves as a foundational base for other
components. See e.g., McKeachnie, para [0025]. We believe that it is
conclusory and speculative on the part of the Examiner to conclude that the
mandrel could be removed from the device by disintegration without
running the risk of compromising the structural integrity of the remaining
device. Thus, we are not persuaded that a person of ordinary skill in the art
would remove the mandrel by disintegration, neither would he be motivated
to attempt to do so. Therefore, we do not sustain the rejection of claim 3,
neither do we sustain the rejections of claims 4-8 that depend therefrom.
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Claims 14, 15, 17, 22, 24 and 29
Claims 14, 15 and 17 depend from claim 1 and claims 22, 24 and 29
depend from claim 19. Id.2 In each instance, the respective claims add a
dependent limitation directed to one of the various types of sacrificial
materials identified and listed in Appellant’s specification. See Spec, p. 7, ll.
8-11; Clms. App’x.3 With respect to each respective dependent limitation,
the Examiner takes Official Notice that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to have modified
the downhole device of McKeachnie to use any form of sacrificial material
depending on the conditions within the wellbore and the end result desired
by the operator. Ans. 5.
In each instance, Appellant traverses the rejection by arguing that
McKeachnie fails to disclose the dependent limitation. App. Br. 37-51.4
Appellant’s arguments do not apprise us of error as they fail to fairly meet

2 Claims 1 and 19 are obvious. See In re Fracalossi, 681 F.2d 792,
794 (CCPA 1982) (a disclosure that anticipates under 35 U.S.C. § 102 also
renders the claim unpatentable under 35 U.S.C. § 103 since anticipation is
the epitome of obviousness).
3 "Sacrificial" as used herein comprises any material capable of
disappearing or being removed such as through application of temperature,
pressure, contact with a fluid, being combusted, being exploded, or being
broken up. "Sacrificial" is understood to encompass the terms, but not be
limited to the terms, dissolvable, degradable, combustible, and disintegrable
as well as materials that are capable of being "removed," "degraded,"
"combusted," "fractured," "detonated," "deflagrated," "disintegrated,"
"degradation," "combustion," "explosion," and "disintegration." Id.
4 Appellant also relies on arguments that we previously considered
with respect to claims 1 and 19 above. Id.
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the substance of the Examiner’s reliance on Official Notice.5 See In re
Chevenard, 139 F.2d 709, 713 (CCPA 1943) (“ . . . in the absence of any
demand by appellant for the examiner to produce authority for his statement,
we will not consider this contention”).
Appellant also argues that the Examiner failed to provide a sufficient
reason to modify McKeachnie to provide two downhole operations, one
before and one after removal of the sacrificial component. App. Br. 37-51.
These arguments are unpersuasive as we have previously found that
McKeachnie already provides two downhole operations as claimed, without
modification. See discussion of claims 1 and 19 supra.
We sustain the rejection of claims 14, 15, 17, 22, 24 and 29.
Claim 21
Claim 21 depends from claim 19 and adds the limitation: “wherein
the immobile structural component comprises a second sacrificial material
and the second sacrificial material is removed after step (d).” Clms. App’x.
The Examiner rejected claim 21 based on the same underlying findings as
with claim 3. As with claim 3, the Examiner concluded that it would have
been obvious to make the mandrel out of a sacrificial material. Ans. 4-5.
We do not sustain the rejection of claim 21 for the same reasons stated
above with respect to claim 3.

5 See M.P.E.P. § 2144.03.C. (to adequately traverse a finding based on
the taking of Official Notice, an applicant must specifically point out the
supposed errors in the Examiner’s action, which would include stating why
the noticed fact is not considered to be common knowledge or well-known
in the art). Appellant’s Reply Brief does not cure Appellant’s failure to
challenge the Official Notice position earlier. See Reply Br. 8. Appellant’s
failure to adequately address this issue earlier effectively deprived the
Examiner of an opportunity to support the Official Notice position with
evidence. In re Chevenard, infra.
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Double Patenting Rejection of Claims 1, 9 and 10
In the Answer, the Examiner clarified that only claim 10 is rejected on
the grounds of statutory double patenting. Ans. 25. Appellant otherwise
agrees with the double patenting rejection of claim 10. App. Br. 52. There
being no issue on the matter for us to decide, we do not sustain the double
patenting rejection of claims 1 and 9, and we summarily sustain the double
patenting rejection of claim 10.
Rejoinder of Claims 11, 13 and 26
In the Appeal Brief, Appellant argues that dependent claims 11, 13
and 26 should be rejoined in the application. App. Br. 53. The Examiner
responds that traversal of a restriction is a petitionable issue and cannot
properly be addressed in an appeal. Ans. 25.
A review of the prosecution history indicates that Appellant submitted
a Response to Restriction Requirement dated September 26, 2010, at which
time, Appellant elected, without traverse, to prosecute only claims 1-10, 12
and 14-26. See also Final Rejection, p. 2. Appellant may not use this appeal
as a vehicle to undo the election. See Ex Parte Houle, 2013 WL 3805025
(PTAB 2013). Furthermore, in the Final Rejection, the Examiner indicated
that claim 26 was withdrawn from consideration as being drawn to a non-
elected species. Consequently, claim 26 is also not properly before the
Board on this appeal. Accordingly, Appellant’s request to rejoin claims 11,
13 and 26 is denied.
DECISION
The decision of the Examiner to reject claims 1, 2, 9, 12, 16, 18, 19
and 23 as anticipated under 35 U.S.C. § 102(b) is AFFIRMED.
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The decision of the Examiner to reject claims 3-8 and 21 as
unpatentable under 35 U.S.C. § 103(a) is REVERSED.
The decision of the Examiner to reject claims 14, 15, 17, 22, 24 and
25 as unpatentable under 35 U.S.C. § 103(a) is AFFIRMED.
The decision of the Examiner to reject claims 1 and 9 on the ground of
statutory double patenting is REVERSED.
The decision of the Examiner to reject claim 10 on the ground of
statutory double patenting is AFFIRMED.
The Appellant’s request to rejoin previously non-elected and/or
withdrawn claims 11, 13 and 26 is DENIED.
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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