Ex Parte Freyer

Patent Trial and Appeal Board

Jun 17, 2014

12624282 (P.T.A.B. Jun. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RUNE FREYER
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Appeal 2012-001105
Application 12/624,2821
Technology Center 3600
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Before: MICHAEL L. HOELTER, JAMES P. CALVE, and
LYNNE H. BROWNE, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1 The real party in interest is Halliburton Energy Services, Inc. App. Br. 3.
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Application 12/624,282

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STATEMENT OF THE CASE
Appellant has filed a Request for Rehearing (“Req. Reh'g.”) dated
May 12, 2014, under 37 C.F.R. § 41.52 of the Decision on Appeal mailed
March 17, 2014 (“Decision”), regarding the rejection of claims 1-4 and 6-13.
We do not modify our opinion.

THE REQUEST FOR REHEARING
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. Arguments not raised
in the briefs before the Patent Trial and Appeal Board (“Board”) and
evidence not previously relied upon in the briefs are not permitted in the
request for rehearing. See 37 C.F.R. § 41.52(a)(1). Also, a request for
rehearing is not an opportunity to merely express disagreement with a
decision without setting forth points believed to have been misapprehended
or overlooked. The proper course for an Appellant dissatisfied with a Board
decision is to seek judicial review, not to file a request for rehearing to
reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145.
Appellant seeks a rehearing for two basic reasons: (a) “[t]here is no
teaching in the references [i.e., Lembcke2, Laflin3, Freyer4, and Evans5] that
a swellable material would seal about a line [i.e., cable] extending through
an opening in a packer seal element” (see Req. Reh'g. 2-3), and (b) “[t]here
is no motivation to combine Evans with the teachings of Lembcke, Laflin or
Freyer” (see Req. Reh'g. 4-5). Under each, Appellant presents multiple

2 Lembcke et al., US 6,173,788 B1, issued Jan. 16, 2001.
3 Laflin et al., US 4,137,970, issued Feb. 6, 1979.
4 Freyer et al., WO 02/20941 A1, published Mar. 14, 2002).
5 Evans, US 3,933, 203, issued Jan. 20, 1976.
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Application 12/624,282

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arguments as to why the Board’s previous Decision should be reversed. We
address these several arguments as points believed to have been
misapprehended or overlooked; and we also address them in the order
raised.

There is no teaching in the references that a swellable material would seal
about a line/cable extending through an opening in a packer seal element
Here, Appellant specifically addresses independent claim 11 stating
that this claim “requires a step of swelling a seal material by contacting the
seal material with a swell-activating material, thereby causing a seal material
to seal about a cable in an opening extending longitudinally through the seal
material.” Req. Reh'g. 2. Appellant contends that “it is the swelling of the
seal material that results in a seal being achieved about the cable in the
opening” and that “[n]one of the Lembcke, Laflin, Freyer and Evans
references teaches this limitation of claim 11.” Req. Reh'g. 2.
The Examiner rejected claim 11 as being unpatentable over Lembcke,
Laflin, and Evans and the Examiner also separately rejected claim 11 as
being unpatentable over Lembcke, Freyer, and Evans. Ans. 6, 7. In both
rejections, the Examiner primarily relied on Lembcke but acknowledged that
“Lembcke et al. do[es] not disclose the seal material as swelling and
increasing in volume in response to contact with a swell-activating material
or a slit extending between the opening and an outer surface of the packer.”
Ans. 6, 8. The Examiner relied on the teachings of Laflin (in the former
rejection) and Freyer (in the latter rejection) for disclosing a packer that
swells. Ans. 6-8. Also, for both rejections, the Examiner relied on Evans
for disclosing a through-opening with a slit. Ans. 7-9.
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Addressing Lembcke, Appellant contends that “Lembcke describes
sealing about the line by longitudinally compressing the seal element” while
the invention of claim 11 achieves sealing “by swelling.” Req. Reh'g. 2.
The Board addressed this matter at pages 10 and 11 of the Decision that
states:
Here, Appellant is disregarding Laflin’s teaching of sealing by the
combination of both longitudinal squeezing and also swelling
upon contact with a fluid such as water. Laflin 3:63 to 4:8 and
4:29-32. Laflin further states that the invention is beneficial
where the surfaces are uneven or where the surface has
discontinuities and, more precisely, that during chemical
expansion (i.e., not mechanical squeezing) “the element expands
to block such discontinuities which often are not blocked simply
by mechanical expansion.” Laflin 4:7-15; see also Ans. 13.
Hence, Appellant’s contention that the combination of Lembcke
and Laflin rely solely on “longitudinal squeezing” is misplaced.
App. Br. 20; Reply Br. 22. Further, Appellant fails to
persuasively explain why Laflin’s teaching of chemical swelling
to seal around uneven surfaces would not also accrue to any
uneven cable surface within the opening.
In the present Request for Rehearing, Appellant makes the same
distinction between longitudinal compression of the seal element and swelling
of the seal element, but nowhere does Appellant indicate where claim 11
precludes initial compression prior to chemical swelling about the cable.
Further, as indicated in the Decision above, Laflin clearly discloses swelling
and that during such swelling, “the element expands to block such
discontinuities which often are not blocked simply by mechanical expansion.”
Laflin 4:12-15; see also Decision 11. In other words, we understand Laflin as
disclosing “both longitudinal [compression] and also swelling.” Decision 10
(citation omitted). In short, Appellant’s present contention is not persuasive
that the Board misapprehended or overlooked this argument. Nor is
Appellant’s contention persuasive that the Board’s analysis is faulty since
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“Appellant [still] fails to persuasively explain why Laflin’s teaching of
chemical swelling to seal around uneven surfaces would not also accrue to
any uneven cable surface within the opening.” Decision 11.
Appellant also addresses Laflin’s reference to a “conduit” and how
this is “a conduit external to the packer.” Req. Reh'g. 2-3. However, Laflin
was not relied on for its teachings regarding the location of a conduit but
instead for disclosing a swellable seal material. Ans. 6-7. Appellant also
contends that “[n]either of the Laflin and Lembcke references describes that
swelling of the seal element could be effective to seal about a cable.” Req.
Reh'g. 3. Appellant seems to ignore the fact that Laflin and Lembcke are
both directed to sealing and they both describe sealing material (see Laflin
and Lembcke generally). Thus, Appellant’s unsupported assertion that
neither such reference “could be effective to seal about a cable” is not
persuasive, especially when Fig. 2 of Lembcke specifically discloses sealing
about a cable and further, the Examiner finds that it would have been
obvious “to replace the seal of Lembcke et al. with the swellable material of
Laflin et al. since . . . Laflin et al. suggest[s] such a substitution (col. 3, lines
63+)” (Ans. 7). See also Decision 4.
Appellant acknowledges that “[t]he Freyer reference merely describes
a packer that includes a swellable seal element” (see also Decision 11-12)
but that Freyer’s element is “used to seal against a surface external to the
seal element” and that Freyer does not describe any capability “to seal about
a cable internal to the seal element.” Req. Reh'g. 3. However, as with
Laflin supra, Freyer was not relied on for its teachings regarding the location
of the seal element but instead, for disclosing a swellable seal material. Ans.
8. Appellant’s contention is not persuasive.
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Appellant also addresses Evans as not describing “a packer” or “a seal
at all” (Req. Reh'g. 3) but, Evans was not relied on by the Examiner for such
teachings in that Evans was relied on for disclosing a slit. Ans. 7-9.
In summary, Appellant’s contentions are not persuasive that the Board
erred or otherwise misapprehended or overlooked points made by Appellant
regarding “claim 11 and its dependents.” Req. Reh'g. 3.

There is no motivation to combine Evans with the teachings of
Lembcke, Laflin, or Freyer
Appellant’s argument here is that Evans is not analogous art. Req.
Reh'g. 4-5. This contention is addressed in pages 8-9 of the Decision.
Presently, Appellant acknowledges that Evans discloses a centralizer and
that “[a] centralizer is a completely different type of downhole tool as
compared to a packer.” Req. Reh'g. 4. Appellant also states that “[a]lthough
the Evans reference is classified in the same class as Lembcke and Laflin,
that is clearly not dispositive of the non-analogous art issue.” Req. Reh'g. 4.
“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” In re
Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)(citations omitted). We are
instructed that a reference is analogous art if it either is in the field of the
Applicant’s endeavor or is reasonably pertinent to the particular problem
with which the inventor is concerned. In re Kahn, 441 F.3d 977, 987 (Fed.
Cir. 2006). The Decision references Kahn and also addresses both prongs
recited therein. Decision 9. Here, Appellant acknowledges that Evans is a
downhole tool and that Evans is in the same class as Lembcke and Laflin.
Req. Reh'g. 3. However, Appellant does not dispute that Lembcke and
Laflin are analogous art, only that Evans is. Req. Reh'g. 4. Appellant
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alleges that Evans’ “centralizer is relatively short” and that “[c]entralizers do
not seal off the annulus” (Req. Reh'g. 4), but the Examiner did not rely on Evans
for its size or to seal off an annulus. Instead, the Examiner relied on Evans for
disclosing “a wellbore device for containing a cable or pipe comprising a through-
going opening (55, 56) and a slit.” Ans. 7. Appellant’s contentions are not
persuasive that the Board’s discussion of Evans in its Decision addressing how
Evans satisfies both prongs (when only one is required) overlooked or
misapprehended any points on appeal. Decision 8-9.
In light of Appellant’s failure to indicate where the Board committed
reversible error, we are not persuaded to change our Decision.

DECISION
Appellant’s Request for Rehearing has been granted to the extent that
we have reconsidered our Decision in light of the arguments in Appellant’s
Request for Rehearing, but is denied with respect to our making any
modification to the Decision.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED
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