Ex Parte Freyer

Patent Trial and Appeal Board

Mar 13, 2014

12624282 (P.T.A.B. Mar. 13, 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 12/624,282
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 APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-4 and 6-13. App. Br. 5. Claim 5 is canceled. App. Br.
5. The parent of this application was also appealed. See Appeal No. 2011-
001833 (App. Br. 4). A Decision in that matter was mailed March 15, 2013.
We also have jurisdiction in the present matter under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter pertains to “a cable duct in a swelling
packer adapted to seal an annulus between a production tubing and a
casing.” Spec. 1:3-5. Independent claims 1 and 6 are illustrative of the
claims on appeal and are reproduced below:
1. A cable duct device, comprising:
a swellable packer adapted for sealing an annulus, the
packer including a seal material which swells and thereby
increases in volume in response to contact with a swell-
activating material;
at least one through-going opening positioned between an
inner surface and an outer surface of the packer and adapted to
constitute a duct for a cable or pipe; and
a slit extending between the through-going opening and
only one of the outer surface of the packer and the inner surface
of the packer prior to actuation of the packer.

6. A cable duct device, comprising:
a packer adapted for sealing an annulus;
at least one through-going opening positioned between an
inner surface and an outer surface of the packer and adapted to
constitute a duct for a cable or pipe; and
a slit extending between the through-going opening and
the outer surface of the packer prior to actuation of the packer,
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wherein the inner surface of the packer is circumferentially
continuous prior to actuation of the packer.

REFERENCES RELIED ON BY THE EXAMINER
Evans US 3,933,203 Jan. 20, 1976
Laflin US 4,137,970 Feb. 6, 1979
Lembcke US 6,173,788 B1 Jan. 16, 2001
Freyer WO 02/20941 A1 Mar. 14, 2002

THE REJECTIONS ON APPEAL
1. Claims 6-9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Lembcke and Evans. Ans. 5.
2. Claims 1-4 and 10-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lembcke, Laflin, and Evans. Ans. 6.
3. Claims 1-4, 10, 11, and 13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lembcke, Freyer, and Evans. Ans. 7.

ANALYSIS1
The rejection of claims 1-4 and 10-12
as being unpatentable over Lembcke, Laflin and Evans
Appellant argues claims 1, 3, 4, and 10 together. App. Br. 16-18. We
select independent claim 1 for review with claims 3, 4, and 10 standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellant also
separately argues claim 2 and further separately argues claims 11 and 12
together. App. Br. 19-22. We address claim 2 infra and we also select claim
11 for review with claim 12 standing or falling with claim 11.

1 We address the above rejections in the order Appellant addresses them.
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Claim 1
The Examiner finds that Lembcke discloses “a swellable packer”
having “at least one through going opening” that is “adapted to constitute a
duct for a cable (14).” Ans. 6. The Examiner also finds that Lembcke
discloses “an opening extending longitudinally through the seal material”
and positioned as claimed such that swelling of the seal causes “the seal to
seal about the cable in the opening (fig 2).” Ans. 6; see also Lembcke 2:51-
52. However, the Examiner acknowledges that Lembcke does not disclose
“the seal material as swelling and increasing in volume in response to
contact with a swell-activating material.” Ans. 6. To teach this, the
Examiner relies on Laflin for disclosing “a packer including a seal material
which swells and thereby increases in volume in response to contact with a
swell-activating material (col. 3, lines 16-19).” Ans. 6-7. The Examiner
identifies where Laflin itself specifically teaches the substitution of a “fluid
expandable substance” for a conventional “expandable rubber material” so
as to be employed “where the surface of the fluid conduit is uneven.” Ans. 7
referencing Laflin 3:63+ and 4:8+. To be more precise, Laflin 3:63 to 4:7 is
as follows (italics added):
The present invention may comprise conventional
mechanically activated packers wherein the fluid expandable
substance is employed for the deformable packer element in
lieu of the substantially non-chemically expandable rubber
material conventionally employed in such mechanically
activated packers. Where such a tool is employed, the tool is
positioned in the fluid conduit, the deformable packer element
is mechanically deformed in a conventional manner to cause the
packer element to engage the walls of the fluid conduit, and the
packer element is thereafter contacted with a suitable fluid to
cause the packer element to expand and more tightly engage the
walls of the conduit.
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Hence, Laflin teaches both expansion by conventional tooling and
also further expansion by contacting the packer element with a fluid. More
precisely, Laflin teaches that the disclosed packer element is “a chemically
expandable packer element which imbibes water and expands on contact
with water and naturally occurring brines.” Laflin 4:29-32; see also 3:16-19.
However, the Examiner further acknowledges that neither “Lembcke
et al. nor Laflin disclose a slit between the opening and the outer surface of
the packer (although it appears that Lembcke et al. may teach this with the
longitudinal bore as in col. 2, lines 51-52).” Ans. 7. Here, the Examiner
relies on Evans for disclosing “a wellbore device for containing a cable or
pipe comprising a through-going opening (55, 56) and a slit extending
between the through going opening and an outer surface (58, 59).” Ans. 7
(italics added).
In conclusion, the Examiner finds that after substituting Laflin’s fluid-
activated packer material for Lembcke’s convention packer material (as
expressly stated in Laflin), it would have been obvious to provide this
combination “with a slit, as taught by Evans, in order to contain and protect
a cable or pipe within the opening prior to actuation of the packer, as the
assembly is being run downhole.” Ans. 7; see also Evans 3:44-47.
Appellant acknowledges Lembcke’s “conventional mechanically-set
packer,” and further that “Lembcke relies on the longitudinal compression of
the sealing element to effect a seal around the I-wire or control line.” App.
Br. 17 (underlining added); see also Reply Br. 17-18. However, Appellant
contends that neither Laflin nor Evans teaches or suggests “that such sealing
of a groove . . . could be accomplished using a swellable seal element.”
App. Br. 17; Reply Br. 18. Here, we agree with the Examiner that Appellant
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is arguing “the references separately” (Ans. 12) in that Appellant
acknowledges that Lembcke (not Laflin or Evans) teaches effecting a seal
around the cable by a material that expands. App. Br. 17; Reply Br. 17-18.
Further, Laflin is relied on for disclosing that the conventional mechanical
packer material employed by Lembcke may be replaced with a packer
material that not only expands upon compression in the conventional manner
but also expands further upon contact with a fluid via non-mechanical (i.e.
chemical) means. Ans. 7, 11. Also, Evans is relied on not only for
disclosing a longitudinal opening but also for disclosing a slit that permits a
cable to be inserted into such an opening for protection during run-in. Ans.
7, 11.
Appellant emphasizes that “there is simply no teaching whatsoever in
any of these references that a swellable seal material would effectively seal
about Evans’ control line openings . . . .” App. Br. 17; Reply Br. 18.
Appellant’s contention is not persuasive of Examiner error regarding the
Examiner’s findings that Lembcke preferably relies on longitudinal
compression to provide radial expansion or that Laflin teaches the use of a
material that both expands upon compression and also swells upon contact
with an activating fluid. Ans. 6-7, 11. Laflin itself teaches the substitution
of the one for the other such that a skilled artisan would have had a reason to
employ Laflin’s swellable material in Lembcke and that such employment
would have had a reasonable expectation of success. Ans. 11; see also
Laflin 3:63-68. Furthermore, Appellant’s argument regarding the sealing
around Evans’ control line openings is not commensurate with the scope of
claim 1 which recites “a swellable packer” “including a seal material which
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swells and thereby increases in volume in response to contact with a swell-
activating material.”
Appellant further contends that the Examiner provided no reasoning
“as to why a person skilled in the art would have been motivated to make the
invention recited in the claims” and that “[t]he only motivation is provided
by applicant’s own specification.” App. Br. 18; Reply Br. 18. We disagree.
The Examiner’s stated reason to combine (Ans. 7) is due, at least in part, to
Laflin’s express statement that in “conventional mechanically activated
packers[, Laflin’s] fluid expandable substance is employed . . . in lieu of the
substantially non-chemically expandable rubber material conventionally
employed in such mechanically activated packers.” Laflin 3:63-68 (italics
added). Further, regarding the Examiner’s reliance on Evans’ disclosure of
slits, the Examiner finds that “Lembcke et al. may teach this” since Lembcke
teaches a “longitudinal bore;” but, nevertheless, Lembcke does not expressly
disclose a slit and as such, the Examiner relies on Evans’ express disclosure
of slits 58, 59 to provide access to a longitudinal bore (55, 56) extending
through a wellbore device. Ans. 7. Appellant’s contention is not persuasive
that the Examiner’s stated reason to combine lacks “articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
While not expressly stated, we understand Appellant’s arguments to
also include components directed to the improper use of hindsight by the
Examiner. App. Br. 18; Reply Br. 18. It must be recognized that any
judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning. But so long as it takes into account only
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knowledge which was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from the applicant's disclosure, such a reconstruction is proper (see In re
McLaughlin, 443 F.2d 1392 (CCPA 1971). As stated above, the Examiner’s
reasoning only takes into account knowledge already known to one skilled in
the art at the time of the invention. “The person of ordinary skill in the art is
a hypothetical person who is presumed to know the relevant prior art.” In re
GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)(citation omitted).
Accordingly, we are not persuaded by Appellant’s contention, intentional or
not, regarding the Examiner’s improper reliance on hindsight reasoning.
In Appellant’s Reply Brief, Appellant disputes the Examiner’s focus
on Lembcke’s teaching of only “preferably” employing a packer element
which expands radially when squeezed longitudinally. Reply Br. 19; Ans.
10; Lembcke 2:35-40. Appellant contends that this is “‘the only type of
packer element described by Lembcke.’” Reply Br. 19. However, the
Examiner is not relying solely on Lembcke but instead has issued a rejection
that relies on Laflin too. Ans. 6. There is little to dispute regarding Laflin’s
disclosure of substituting a conventional-type packer element for one that
not only expands upon compression in conventional tooling but which also
chemically expands upon contact with a fluid. Laflin 3:63 to 4:7 reproduced
supra. Appellant fails to explain how “one of ordinary skill would not have
a reasonable expectation of success in the substitution of [Laflin’s] swellable
material for Lembcke’s preferred compressed seal material.” Reply Br. 19.
Appellant also contends that “[t]he Evans reference is simply not
analogous art.” App. Br. 15; Reply Br. 15. Appellant bases this assertion on
the fact that it is classified by the PTO differently and also because Evans “is
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concerned with the problem of accommodating and protecting control lines
in a wellbore annulus.” Reply Br. 19. The Examiner disagrees because
Evans’ tool is “in the same field of endeavor (i.e. downhole tools, as
classified in class 166) and is concerned with the same problem (i.e.
accommodating and protecting control lines in a wellbore annulus).” Ans.
10. The Examiner’s findings address both tests for non-analogous art (only
one being necessary) which is consistent with the teachings of Kahn, 441
F.3d at 987. Appellant’s reliance on a different classification, when that
classification is still directed to downhole tools (the same as Appellant’s
claimed invention) is not persuasive. Appellant’s contention that “a
centralizer is non-analogous art with respect to a packer” is also not
persuasive when both are still in the same field of endeavor. Reply Br. 20.
Appellant further contends that “Evans describes a centralizer which
includes no seals at all” and hence “Evans clearly is not directed to the
problem of sealing a cable to a packer.” Reply Br. 20. Here, Appellant is
not addressing the Examiner’s reliance on Evans, which is that Evans
expressly discloses a slit that enables a cable to be placed in a longitudinal
bore. Ans. 7. For sealing about a cable, the Examiner relies on the
teachings of Lembcke which is acknowledged by Appellant. Ans. 6; App.
Br. 17. Furthermore, Appellant’s contention that Evans is directed to a
different problem despite Evans’ express disclosure of an arrangement that
“prevents the control lines from being fouled or tangled, and inhibits damage
thereto” both “during installation and during subsequent use in the well
bore” (Evans 3:44-47) is not persuasive that Evans is non-analogous art.
Based on the record presented, we sustain the Examiner’s rejection of
claims 1, 3, 4, and 10.
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Claim 2
Claim 2 depends from claim 1 and further includes the limitation of
“wherein the through-going opening encloses the cable both prior to and
after swelling has occurred in the swellable packer.” Appellant’s initial
arguments address the art individually such as by contending that “Lembcke
does not disclose swelling of a packer seal element” and Laflin does not
disclose “any type of cable duct device.” App. Br. 19. The Examiner relies
on Lembcke (and Evans) for disclosing a cable duct and on Laflin for a
packer seal element that also swells. Ans. 7. Appellant also contends, as
above with respect to claim 1, that one skilled in the art “would have no
reason to replace the seal material of Lembcke with the swellable material of
Laflin.” App. Br. 19; Reply Br. 21. This contention is not persuasive for the
reasons set forth supra. We sustain the Examiner’s rejection of claim 2.

Claim 11
Independent method claim 11 tracks closely the limitations recited in
independent apparatus claim 1 and as such, Appellant relies on similar
arguments which are not persuasive. Appellant further contends that
Lembcke, even with Laflin’s swellable material, “still closes and seals about
the cable as a result of longitudinal squeezing of the element.” App. Br. 20;
Reply Br. 22. In contrast, “claim 11 requires the seal material to seal about
the cable as a result of swelling the seal material.” App. Br. 20; Reply Br.
22. 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
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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.
Appellant also contends that “none of the references describes the
swelling step being performed after the cable is inserted through the slit.”
App. Br. 20; Reply Br. 22. Appellant provides no further support for this
contention and does not address Evans’ disclosure of placing a cable within
an opening 55, 56 via slits 58, 59 (see Evans Fig. 2) or the Examiner’s
finding that such placement would occur prior to the assembly being run
downhole and hence is no longer accessible. Ans. 7; see also Ans. 13 and
Evans 3:44-47.
In view of the above, Appellant’s contentions are not persuasive of
Examiner error and accordingly, we sustain the Examiner’s rejection of
claims 11 and 12.
The rejection of claims 1-4, 10, 11, and 13
as being unpatentable over Lembcke, Freyer, and Evans
Here, the Examiner references Freyer for the same reasons the
Examiner previously referenced Laflin; the exception being that while Laflin
discloses a water-activated seal as recited in claim 12 (see Laflin 4:29-32),
Freyer discloses a seal activated by hydrocarbons as recited in claim 13
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(Freyer Abstract). Ans. 7-9, 13-14. Appellant does not dispute Freyer’s
teaching of a seal activated by hydrocarbon but instead, Appellant presents
arguments similar to those previously presented. App. Br. 23-28; Reply Br.
27-37.
In this rejection, the Examiner does not identify where Freyer itself
specifically discloses the substitution of the one packer material for the other
as does Laflin. Instead, the Examiner finds that “Lembcke et al. only
‘preferably’ rely on longitudinal compression (col. 2, lines 36-37)” and that
the ability to create radial expansion of packer material “may be
accomplished with other methods and materials (such as the swelling
material of Freyer).” Ans. 13. The Examiner concludes that
it would have been obvious “to replace the seal of Lembcke et al. with the
swellable material of Freyer in order to provide a seal which can swell and
accommodate uneven borehole surfaces.” Ans. 8.
Appellant also contends that “[o]nly the present applicant has
discovered the problems inherent in positioning a cable duct in a
conventional mechanically-set packer (problems such as longitudinal
compression of the cable with the sealing element), and has applied
swellable material technology to overcome these problems.” App. Br. 24;
Reply Br. 28. This argument is not persuasive because Lembcke also
addresses the problem (and provides a solution therefore) of accommodating
control lines that pass through/within a sealing element. See Lembcke 1:62-
63, 2:51-52. As such, this problem is not an unknown, un-addressed or un-
solved problem that might otherwise necessitate additional considerations of
non-obviousness such as “failure of others,” “long felt but unsatisfied need,”
“unexpected results,” “hindsight,” and the like. App. Br. 23-24; Reply Br.
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27-28. We are also mindful that the Supreme Court has clearly stated that
“if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417 (citations
omitted). As such, Appellant’s contentions are not persuasive that the
findings and conclusions by the Examiner are in error. App. Br. 23-28;
Reply Br. 27-37. We sustain the Examiner’s rejection of claims 1-4, 10, 11,
and 13.
The rejection of claims 6-9
as being unpatentable over Lembcke and Evans
Independent claim 6, and by extension, dependent claims 7-9, do not
require the packer to be “swellable” as recited in above claims 1 and 11.
Hence, for this rejection, the Examiner does not rely on either Laflin or
Freyer. Appellant, however, inexplicably states that claim 6 requires “a
swellable packer.” App. Br. 29; Reply Br. 38. To the extent that
Appellant’s arguments rely on a “swellable” packer, Appellant’s contentions
are not persuasive. Appellant otherwise presents arguments consistent with
those previously discussed. These arguments are not persuasive for the
reasons expressed above. We sustain the Examiner’s rejection of claims 6-9.
Additional Arguments
In Appellant’s Appeal and Reply Briefs, Appellant discusses the
claimed invention and also discusses the teachings of Lembcke, Laflin,
Freyer and Evans. App. Br. 10-15; Reply Br. 10-15. The distinctions made
by Appellant in this section of both Briefs have also been made elsewhere
and are discussed supra. We do not find them persuasive.
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DECISION
The Examiner’s rejections of claims 1-4 and 6-13 are 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).

AFFIRMED
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