Ex Parte Gustafson et al

Patent Trial and Appeal Board

Dec 17, 2014

12366756 (P.T.A.B. Dec. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/366,756 02/06/2009 Eric J. Gustafson 5690-197 8494
20792 7590 12/17/2014
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
COY, NICOLE A
ART UNIT PAPER NUMBER
3672
MAIL DATE DELIVERY MODE
12/17/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC J. GUSTAFSON, WILLIAM S. BUTTERFIELD, and
PETER WILLIAMSON
____________

Appeal 2012-007831
Application 12/366,7561
Technology Center 3600
____________

Before EDWARD A. BROWN, LYNNE H. BROWNE, and
JAMES J. MAYBERRY, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 2, 7, 8, 13, 14, 17, and 18. Br. 1.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the real party in interest as Stowe Woodward, LLC.
Br. 1.
2 Appellants indicate that claims 5, 6, and 12 are canceled, and that claims 3,
4, 9–11, 15, 16, and 19–22 are withdrawn from consideration. Br. 7–10,
Claims App.
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Application 12/366,756

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Claimed Subject Matter
Claims 1 and 13 are independent claims. Claim 1, reproduced below,
is illustrative of the subject matter on appeal.
1. A packer assembly for a wellbore, comprising:
a tubular member; and
a packer system that circumferentially overlies the tubular
member, the packer system including end portions, intermediate
portions disposed between the end portions, and a central portion
disposed between the intermediate portions;
wherein the central portion, the intermediate portions, and the
end portions are formed of material that swells when contacted with a
swelling fluid; and
wherein the central, intermediate and end portions are
constructed to swell upon contact with the swelling fluid so that the
central portion swells to a diameter defined by a wall of the wellbore
more rapidly than the portions, and the intermediate portions swell
more rapidly than the end portions.3
Appeal Br. 7, Claims App.
Rejections4
I. Claims 13, 14, 17, and 18 stand rejected under 35 U.S.C. § 112,
second paragraph. Answer 5.

3 As discussed in the Final Rejection, in claim 1, at line 10, it appears that
“the portions” should be “the intermediate portions.” See Final Action 2,
Claim Objections; Br. 7, Claims App. The same language also appears in
claim 13, at line 5. See Final Action 2, Claim Objections; Br. 8, Claims
App.
4 The rejection of claims 1, 2, 7, 8, 13, 14, 17, and 18 under 35 U.S.C.
§ 102(e) as anticipated by Ohmer (US 7,431,098 B2, issued Oct. 7, 2008) is
withdrawn. Answer 4.
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Application 12/366,756

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II. Claims 1, 2, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fukutomi (JP 4363499 A, published Dec. 16,
1992) (hereinafter “JP ’499”). Answer 5.
III. Claims 7, 8, 17, and 18 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over JP ’499 and Ohmer. Answer 7.

ANALYSIS
Rejection I
Regarding the recitation in claim 13 of “the central portion is formed
of a first material, the intermediate portions are formed of a second, different
material, [and] the end portions are formed of a third, still different
material,” the Examiner finds that it unclear what “still different” means, and
“whether the third material is different from the second material, or the first
material, or both.” Answer 5.
Appellants explain that the recitation of “a third, still different
material” means that the third material is different from both the first
material and the second material. Br. 3. We note that this claim
construction is consistent with the description in paragraphs 30 and 31 of
Appellants’ Specification.
Claim 13 recites that the second material is a “different material” and
the third material is a “still different material.” Consistent with Appellants,
we construe the recitation “still different” in the context of the claim to mean
that the first, second, and third materials are three different materials.
As we find that the meaning of “still different” is sufficiently clear,
we do not sustain the rejection of claim 13, or its dependent claims 14, 17,
and 18, under 35 U.S.C. § 112, second paragraph.
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Application 12/366,756

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Rejection II
Appellants argue claims 1, 2, 13, and 14 as a group. Br. 4–5. We
select claim 1 to decide the appeal with respect to the group as to this ground
of rejection. See 37 C.F.R. § 41.37(c)(1)(vii).
As to claim 1, the Examiner finds that Fukutomi discloses a packer
assembly comprising a packer system including central portion 10 and end
portions 12, wherein central portion 10 swells to a diameter defined by a
wall of a wellbore more rapidly than end portions 12. Answer 5–6 (citing JP
’499, Figs. A–C).5 The Examiner finds that JP ‘499 does not disclose that
the packer system also includes intermediate portions, as claimed. Id. at 6.
The Examiner concludes, however, that it would have been obvious to
include the claimed intermediate portions in the JP ’499 packer system
because “mere duplication of essential working parts of a device involves
only routine skill in the art.” Id. The Examiner further determines that
because JP ’499 teaches different materials with different swell rates, it
would have been obvious
to include more portions, having the same adjacent relationship
as the end and central portions do to each other, and thus it
would be within the skill of one in the art to devise a packer
with intermediate portions made of different materials than the
surrounding portions having a different swell rate than the
surrounding portions.
Id.
Appellants contend that JP ’499 discloses that mold members 12 are
included in the system for the purpose of restricting axial swelling of the
central member 10, and that including intermediate portions that swell more

5 We reference the English-language translation of ’JP 499.
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than the end portions in JP ’499 would tend to provide less restriction to
axial swelling of the central portion, directly contravening the stated purpose
of mold members 12. Br. 4–5 (citing ’JP 499, Abstract). Appellants also
contend that the claimed central, intermediate, and end portions of the
packer system have the purpose of avoiding voids between the packer
assembly and the downwell environment. Id. at 4.
Appellants’ contentions are not persuasive. The Examiner responds
that the rejection does not replace the end portions. Answer 8. The
Examiner also finds that JP ’499 further discloses a multi-layer structure
including several soft molded bodies and hard molded bodies arranged
between the soft molded bodies, for use in cases where higher water cut-off
performance is required. Id. (citing JP ’499, ¶ 16). The Examiner also
determines that including more portions in the JP ’499 packer system would
enhance sealing. Id. at 8–9.
We agree with the Examiner that Appellants do not provide
persuasive argument or objective evidence to show that adding intermediate
portions in JP ’499 would contravene the stated purpose of mold members
12. Answer 8–9. The Examiner’s modification of JP ’499 does not modify
or remove mold members 12. Appellants do not persuasively explain how
placing intermediate portions between molded body 10 and hard molded
bodies 12 in JP ’499 would reduce the restriction of axial swelling of molded
body 10. In this regard, it appears that the added intermediate portions and
molded bodies 12, by being located on opposite sides of molded body 10,
would restrict axial expansion of molded body 10 in the modified packer
assembly, and that molded bodies 12 would still provide their desired
strength properties. Further, in light of the teaching in JP ‘499 that a multi-
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layer structure provides higher water cut-off performance than a structure
including only molded body 10 and molded bodies 12 (see JP ’499, ¶ 16),
Appellants do not apprise us of error in the Examiner’s determination that
adding intermediate portions would enhance sealing with the wellbore in the
modified ’JP 499 packer system.
Regarding placement of the added intermediate portions in JP ’499,
the Examiner determines that one skilled in the art would add more portions
in the packer system such that the swell rates would decrease for each
portion towards the end portions, so that the middle portion would form a
seal first, then the intermediate portions, and finally the end portions, so that
fluid is not trapped between portions. Answer 9. Appellants do not apprise
us of any error in the Examiner’s reasoning for locating the central,
intermediate, and end portions in this arrangement.
In view of the above, we sustain the obviousness rejection of claims
1, 2, 13, and 14.
Rejection III
Appellants merely rely on the dependency of claims 7, 8, 17, and 18
from claim 1 or claim 13 for patentability. Appeal Br. 6. Because we find
no deficiency in the rejection of claims 1 and 13 for the reasons discussed
above, we sustain the obviousness rejection of claims 7, 8, 17, and 18 for the
same reasons.

DECISION
We reverse the rejection of claims 13, 14, 17, and 18 under 35 U.S.C.
§ 112, second paragraph.
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We affirm the rejection of claims 1, 2, 13, and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over JP ’499.
We affirm the rejection of claims 7, 8, 17, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over JP ’499 and Ohmer.
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

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