Ex Parte Givens et al

Patent Trial and Appeal Board

Nov 19, 2018

13398829 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/398,829 02/16/2012
36735 7590 11/21/2018
PATTERSON & SHERIDAN, L.L.P. /Weatherford
24 Greenway Plaza, Suite 1600
HOUSTON, TX 77046
George Givens
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
WEAT/0980USP3 2961
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
11/21/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PSDocketing@pattersonsheridan.com
Pair_eOfficeAction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE GIVENS and ROCKY A. TURLEY
Appeal2018-002001
Application 13/398,829
Technology Center 3600
Before JEREMY M. PLENZLER, PAUL J. KORNICZKY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Decision rejecting claims 1-5, 8-12, 15, 17, 18, and 22. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2018-002001
Application 13/398,829
CLAIMED SUBJECT MATTER
Claims 1 and 9 are independent claims, with claims 2-5, 8, 10-12, 15,
17, 18, and 22 depending from claim 1 or 9. Claim 1 is representative of the
claims on appeal, and is reproduced below:
1. A downhole tool for use in a wellbore, the tool
compnsmg:
a tubular having a tapered outer surface;
an expandable annular member disposed on the tubular,
the expandable member having an anchor portion, wherein the
anchor portion includes a gripping surface that is configured to
penetrate the well bore upon expansion of the expandable
annular member, and wherein the anchor portion is configured
to support the downhole tool in the wellbore; and
a seal member disposed in a groove of the expandable
annular member, the seal member having one or more anti-
extrusion bands, wherein the seal member and the anchor
portion are configured to be expandable radially outward into
contact with the wellbore as the expandable annular member
moves along the tapered outer surface of the tubular, wherein
the anchor portion and the groove are formed integrally in the
expandable annular member, and wherein the expandable
annular member includes a second groove formed in a radially
inward surface thereof, and wherein a second sealing member is
disposed in the second groove.
REJECTIONS
1. Claims 1, 4, 5, 8-12, 17, 18, and 22 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Oneal (US 6,123,148, issued Sept. 26,
2000), Young (US 3,631,926, issued Jan. 4, 1972), and Hirth (US 6,962,206
B2, issued Nov. 8, 2005).
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Application 13/398,829
2. Claims 2, 3, and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Oneal, Young, Hirth, and Tamplen (US 3,215,208, issued
June 8, 1961).
OPINION
Appellants argue claims 1, 4, 5, 8-12, 17, 18 and 22 as a group.
Appeal Br. 7-8. We select claim 1 as representative. Claims 4, 5, 8-12, 17,
18, and 22 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 2, 3, and 15 depend from claim 1 or 9, and Appellants' contentions
regarding the patentability of those claims are based on the contentions set
forth regarding claim 1. Appeal Br. 8.
The Examiner finds that Oneal teaches the majority of the limitations
recited in claim 1, but "fails to disclose that the seal member has one or
more anti-extrusion bands and the tubular having a tapered outer surface."
Final Act. 2-3. The Examiner cites Young and Hirth for these additional
features. Id. For example, the Examiner explains that "Young discloses ...
a[n] anchoring seal assembly having one or more anti-extrusion spring bands
22 embedded within the seal member 21 on the outer edge of the seal
member 21" and reasons that "it would have been obvious to one of ordinary
skill in the art at the time the invention was made to provide an anti-
extrusion spring within the seal member of Oneal as taught by Young in
order to prevent withdrawal of the seal." Id. (citing Young 3:41--43).
Appellants do not dispute the Examiner's findings. Rather,
Appellants dispute only the Examiner's rationale for including an anti-
extrusion band with Oneal's seal. Appeal Br. 7-8. Specifically, Appellants
contend "one skilled in the art would not modify the apparatus of Oneal to
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Application 13/398,829
include the spring bands 22 of Young" because "Oneal is specifically
seeking to design an apparatus which avoids the use of anti-extrusion
bands." Id. at 7 (citing Oneal 2:1-24).
The cited portion of Oneal explains that "various attempts have been
made ... to increase resistance of the seal elements to ... extrusion," such
as "backup rings" and "garter springs." Oneal 2: 1-10. Oneal notes that
"these increase the cost of the seal elements and still do not increase the
packer's usability in other casing sizes and weights." Id. at 2:11-13. That
does not mean, however, that backup rings or garter springs would not work
to inhibit seal extrusion in Oneal's system. As noted above, Oneal describes
these as well-known for preventing seal extrusion. The portion of Young
cited by the Examiner also supports this understanding. Young 3 :41--43
("[ A ]nti-extrusion springs 22 may be incorporated with the resilient member
21 for conventional reasons.").
Moreover, Appellants do not even allege that those anti-extrusion
techniques would not work in Oneal's system. Indeed, Oneal later describes
using one of those anti-extrusion techniques, backup rings, for example. See
id. at 13:2-3.
For at least these reasons, we are not apprised of Examiner error in the
rejections of claims 1-5, 8-12, 15, 17, 18, and 22.
DECISION
We AFFIRM the Examiner's decision to reject claims 1-5, 8-12, 15,
17, 18, and 22 under 35 U.S.C. § 103.
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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
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