Ex Parte Kneisl et al

Board of Patent Appeals and Interferences

Sep 24, 2008

10157609 (B.P.A.I. Sep. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte
PHILIP KNEISL, LAWRENCE A. BEHRMANN,
and BRENDEN M. GROVE
____________

Appeal 2008-3423
Application 10/157,609
Technology Center 3600
____________

Decided: September 24, 2008
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1, 3-15,
18, 19, 38-51, and 82-88. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

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Application 10/157,609

STATEMENT OF THE CASE
The claims are directed to shaped charges. Shaped charges are
explosives used to perforate well casing walls (Spec. ¶¶ 2-3). To accomplish
perforation, a perforating gun is typically loaded with one or more shaped
charges and detonated in the direction of the wall to produce a penetrating
jet (id. at ¶¶ 3, 17). “Conventional perforating guns produce significant
debris upon detonation of the shaped charges” (id. at ¶ 4). “Extensive
research on hollow carrier perforating guns indicates that the majority of gun
debris is generated by the shaped charge cases. In fact, roughly 80% of all
gun debris is attributed to the charge cases” (id. at ¶ 5). The Specification
describes caseless shaped charges to reduce debris associated with shaped
charge perforating systems (Spec. ¶¶ 21-26). The pending claims are also
directed to caseless shaped charges.
Claims 1, 3-15, 18, 19, 38-51, and 82-88 are pending and stand finally
rejected as follows:
1) Claims 40 and 43-45 under 35 U.S.C. § 102(e) as anticipated by
Backofen (US 4,628,819, issued Dec. 16, 1986) (Ans. 4);
2) Claims 1 and 46 under 35 U.S.C. § 103(a) as obvious over Bosse-
Platiere (US 4,191,265, issued Mar. 4, 1980) and Backofen (Ans. 4);
3) Claims 38, 39, and 83-86 under 35 U.S.C. § 103(a) as obvious over
Nice (US 5,837,925, issued Nov. 17, 1998) and Davison (US 5,859,383,
issued Jan. 12, 1999) (Ans. 8);
4) Claims 3-5, 47-49, 87, and 88 under 35 U.S.C. § 103(a) as obvious
over Bosse-Platiere, Backofen, and Nice (Ans. 5);
5) Claims 6-9, 41, 42, and 50 under 35 U.S.C. § 103(a) as obvious
over Backofen or Bosse-Platiere and Backofen as applied to claims 1, 40,
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and 46, and further in view of Reese (US 5,656,791, issued Aug. 12, 1997)
or Kapoor (US 5,939,664, issued Aug. 17, 1999) (Ans. 5-6);
6) Claims 10-13 and 51 under 35 U.S.C. § 103(a) as obvious over
Bosse-Platiere and Backofen as applied to claims 1 and 46, and further in
view of Kenworthy (US 6,209,457 B1, issued Apr. 3, 2001) (Ans. 6);
7) Claims 14, 18, and 19 under 35 U.S.C. § 103(a) as obvious over
Bosse-Platiere and Backofen as applied to claim 1, and further in view of
Yates (US 4,829,901, issued May 16, 1989) (Ans. 7);
8) Claim 15 under 35 U.S.C. § 103(a) as obvious over Bosse-Platiere,
Backofen, Yates as applied to claim 14, and further in view of Budinger (US
4,198,739, issued Apr. 22, 1980) (Ans. 7); and
9) Claim 82 under 35 U.S.C. § 103(a) as obvious over Nice and
Davison as applied to claim 38, and further in view of Seeger (US
5,831,207, issued Nov. 3, 1998) (Ans. 9).
Claims 1, 38, 40, and 46 are representative and read as follows:
1. A perforating system, comprising:
a perforating gun comprising a solid loading tube; and
shaped charges being housed in the solid loading tube,
each of the shaped charges comprising an explosive that does
not rely on a shaped charge case for confinement.

38. A debris free perforating system, comprising:
a shaped charge;
a combustible loading tube to receive the shaped charge,
the loading tube comprising a surface; and
an oxidizer coating closely adhering to the surface of the
loading tube.

40. A debris free perforating system, comprising:
a shaped charge comprising a densified explosive that
does not rely on a case for confinement.
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46. A perforating system, comprising:
a perforating gun;
a loading tube of the perforating gun forming a cavity
therein;
a caseless shaped charge having an explosive, the
explosive contacting the loading tube when the shaped charge is
placed in the cavity.

CLAIM INTERPRETATION
There are four independent claims on appeal – claims 1, 38, 40, and
46. These claims are reproduced above. A “shaped charge”, which is at
issue in this appeal, is recited in each of the claims. We begin by
interpreting the meaning of “shaped charge” because before a claim is
properly interpreted it cannot be compared to the prior art.
During patent examination, the words in a claim are given their
broadest reasonable interpretation as they would be understood by persons
of ordinary skill in the art coupled with any clarification offered by the
Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
According to the Specification, shaped charges are explosives which are
utilized to perforate well casings during drilling operations (Spec. ¶¶ 3-5). A
typical prior art shaped charge is characterized in the Specification as having
a case (10), a main body of explosive material (12), a primer used to
detonate the explosive material (13), and a liner (14) (Spec. ¶¶ 15-16; Fig.
1). Figure 1, depicting a prior art shaped charge, is reproduced below:

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Figure 1 shows the charges’ case 10, explosive material 12, primer 13, and
liner 14.
When the charge is exploded, the “liner” acts as a projectile (“jet”)
that perforates the well casing (Spec. 16). The “case” is stated in the
Specification to be “typically steel or similar” and to provide “substantial
inertial confinement, thereby enhancing the proportion of explosive energy
transferred to the” liner (14) “and hence the penetrating jet” (Spec. ¶ 17).
The case also maintains the integrity and shape of the shaped charge (Spec. ¶
24). Thus, we find that persons of ordinary skill in the art would understand
a “shaped charge” to be a specific type of explosive that comprises a case,
explosive material, a primer, and a liner. We interpret “shaped charge” as
recited in the appealed claims to have such a meaning.
In claim 46, the shaped charge is a “caseless shaped charge.” We
interpret the claimed shaped charge to have explosive, primer, and a liner,
but to lack the case. In claims 1 and 40, the shaped charge “does not rely on
a shaped charge case for confinement.” In this case, the shaped charge may
have a case, but it does not rely on the case for inertial confinement and to
keep its integrity and shape – the function associated with the case (Spec. ¶¶
17, 24).
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Claim 40 also states that the “shaped charge” comprises “a densified
explosive.” According to the Specification: “Because . . . a typical shaped
charge relies in part on its metal case to aid in perforating the well casing, it
is desirable to use an explosive 12 that compensates for the elimination of
the case” (Spec. ¶ 21). A “densified explosive” is described as an explosive
“that possesses the beneficial confinement properties usually afforded by the
case” (Spec. ¶ 22). It is “formulated to not expand as quickly, therefore
increasing the duration of its primary pulse” (id.) “In one embodiment, the
explosive 12 is densified by blending it with some inert heavy materials such
as powdered metals. . . . The resulting blend provides more mass at the
detonation front, which delays expansion due to the explosive cloud mass,
and hence increases primary impulse detonation” (Spec. ¶ 23). Thus, we
interpret “densified” to mean that the explosive has been formulated such
that it provide the inertial confinement properties normally supplied by the
case which is present in a typical shaped charge.
Claim 38 is directed to a debris free perforating system comprising a
combustible loading tube. An oxidizer coating is “closely adhering to the
surface of the loading tube.” The term “adhere” means to “stick fast or
together by or as if by grasping, suction, or being glued.”1 Since the
oxidizer must “adhere” to the loading tube surface, we interpret this to
require that the oxidizer stick to the surface of the tube; that is, the oxidizer
must be in contact with the tube surface in order to “adhere” to it.
ANTICIPATION BY BACKOFEN
Claims 40 and 43-45 stand rejected under 35 U.S.C. §102(e) as
anticipated by Backofen.

1 The American Heritage Dictionary 15 (1976).
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THE BACKOFEN PATENT
1. Backofen describes an explosive device to perforate walls (Backofen, at
col. 2, ll. 13-15).
2. The device comprises an outer tamper mass (40’) enclosing an explosive
charge (12’) positioned behind a projectile (14’) (Backofen, at col. 4, ll. 6-
14; Fig. 3).
3. The tamper mass provides inertial confinement and enables the
detonation energy to be concentrated on the projectile (Backofen, at col. 3,
ll. 30-35).
4. The mass includes particulate material, such as metallic particles, bound
together in a self-supporting shape (Backofen, at col. 3, ll. 36-47).
5. The tamper mass replaces steel plates which are utilized in typical
explosive penetrators (Backofen, at col. 3, ll. 47-50).
6. Backofen does not describe the characteristics of the explosive contained
by the tamper mass.
Analysis
Claim 40 is directed to “a shaped charge comprising a densified
explosive that does not rely on a case for confinement.” The Examiner
contends that Backofen describes a “densified explosive [12’] . . . that does
not rely on a case for confinement” (Ans. 4). As evidence, the Examiner
points to Figure 3 of Backofen and states that the explosive 12’ “is densified
in that it is densely packed into the desired shape of the charge” (id. at 11).
Anticipation requires that every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
Cir. 2001). In this case, we do not agree with the Examiner that Backofen
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describes a “densified explosive” as recited in claim 40. We have
interpreted “densified explosive” to mean an explosive which has been
formulated such that it provides the inertial confinement normally conferred
by the case (see “Claim interpretation” supra). Backofen does not describe
the characteristics of the explosive contained by the tamper mass (FF6). Nor
does Backofen provide any information upon which it could be reasonably
presumed that the explosive has been formulated to substitute for the inertial
confinement provided by the case of the shaped charge. To the contrary,
Backofen expressly teaches that its tamper mass provides an inertial
confinement function (FF3-5), militating against such a presumption.
The Examiner’s interpretation of “densified explosive” to mean a
densely packed explosive (Ans. 11) is not consistent with its meaning as
explained in the Specification (see “Claim interpretation” supra). According
to the Specification, a “densified explosive” is an explosive “that possesses
the beneficial confinement properties usually afforded by the case” (Spec. ¶
22). Thus, as indicated by the Specification, the claimed “densified
explosive” has specific properties. There is no evidence that Backofen’s
“densely packed explosive” (Ans. 11) has these properties. Accordingly, we
reverse the rejection of claim 40 and dependent claims 43-45.
OBVIOUSNESS OVER BOSSE-PLATIERE AND BACKOFEN
Claims 1 and 46 stand rejected under 35 U.S.C. § 103(a) as obvious
over Bosse-Platiere and Backofen.

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Claim 1
Findings of Fact
7. Claim 1 is directed to a “perforating system” comprising two elements:
(1) a perforating gun with “solid loading tube”; and (2) “shaped charges
being housed in the solid loading tube.”
8. The solid loading tube comprises more than one shaped charged, i.e.,
“shaped charges . . . housed in the solid loading tube.”
THE BOSSE-PLATIERE PATENT
9. Bosse-Platiere describes an oil-field perforating gun 10 comprising a
tubular carrier 14 into which charge supporting modules 17-19 are inserted
(Bosse-Platiere, at col. 3, 48-50 and 66-68; at col. 4, ll. 9-17; Fig. 1).
10. Each of the modules has a rigid cylindrical body 20 and a cavity 21
formed on one side of each module body for carrying a single shaped-
explosive charge 22 (Bosse-Platiere, at col. 4, ll. 17-24; at col. 3, ll. 10-12;
Fig. 1).
11. The shaped charge has an outer case 24, preferably made of steel, a
compacted explosive pellet 25, and a liner 26 (Bosse-Platiere, at col. 4, ll.
32-37; Fig. 1).
12. Each module can also contain a detonating explosive 30 to detonate the
explosive pellet of the shaped charge 22, which is loaded into interconnected
passages 27 and 28 and the central cavity 29 of the module (Bosse-Platiere,
at col. 5, ll. 2-14).
Analysis
The issue in this rejection is whether Bosse-Platiere teaches more than
one shaped charge in a “solid loading tube.” The Examiner finds that Bosse-
Platiere comprises a loading tube 20 (a “module”), which meets the
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limitations of a “solid loading tube” as recited in claim 1 (Ans. 10; FF7).
The Examiner also finds that the solid loading tube contains two charges –
meeting the second limitation of claim 1 that more than one shaped charge is
housed in the loading tube (FF7-8). The Examiner states: “as seen in figures
1-3, the elements - at 20 [the cylindrical body of the module], contain two
charges being the connecting charges - at 28,29, and the perforating charge -
at 25 as seen in figures 1-3” (Ans. 10).
Appellants contend that the Examiner erred in his findings.
Appellants argue:
Referring to Fig. 1 of Bosse-Platiere and the corresponding text,
the Examiner appears to be referring to shaped explosive charge
22 as being one of the shaped charges and the detonating
explosive 30 as being another one of the shaped charges. As can
be appreciated by one of the skill in the art, the detonating
explosive 30, which is disclosed in lines 2-5 in column 5 of
Bosse-Platiere, essentially serves as a detonating cord for the
shaped charge 22. However, Bosse-Platiere fails to teach or
suggest that the explosive 30 produces a perforating jet or some
other feature that one of skill in the art would associate with a
“shaped charge.”
(Reply Br. 2.)
We agree with Appellants that the Examiner erred. Bosse-Platiere
clearly teaches that each of its modules only contains a single shaped charge
(FF10). The shaped charge is described by Bosse-Platiere to have all its
typical elements, i.e., a case 24, an explosive 25, and a liner 26 (FF11). In
addition to the shaped charge, the module also contains a detonating
explosive 30 loaded in its passages and central cavities (FF12). However, as
argued by Appellants, the detonating charge is to detonate the shaped charge
and has none of the other elements in a shaped charge as we have interpreted
it (see “Claim interpretation” supra). Thus, the Examiner’s finding is not
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correct that each module, i.e., the solid loading tube, has more than one
shaped charge as in claim 1. Because the solid loading tube does not meet
all the limitations recited in claim 1, and the Examiner has not explained
why a solid loading tube with more than one shaped charge would have been
obvious to persons of ordinary skill in the art, we are compelled to reverse
the rejection of claim 1.
Claim 46
13. Claim 46 is directed to a “perforating system” comprising: (1) a
perforating gun; (2) a loading tube; and (3) a shaped charge.
14. The shaped charge is “a caseless shaped charge having an explosive, the
explosive contacting the loading tube when the shaped charge is placed in
the cavity.”
Analysis
The Examiner interprets “case” as recited in the claims to be restricted
to a “solid metallic cup-type casing” (Ans. 12). The Examiner finds that
Backofen teaches a tamper mass, not a “case” as in claim 46 – and thus
meets the limitation of “a caseless shaped charge” (Ans. 4-5). The Examiner
concludes that “it would have been obvious to one of ordinary skill in the art
to take the device of Bosse-Platiere and add the shaped charge not relying
upon a case for confinement of Backofen et al., so as to allow for the device
to be safer when detonated” (id. at 5).
“During [patent] examination, the examiner bears the initial burden of
establishing a prima facie case of obviousness.” In re Kumar, 418 F.3d
1361, 1366 (Fed. Cir. 2005). In setting forth a case of obviousness, “it can
be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
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claimed new invention does . . . because inventions in most, if not all,
instances rely upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in some sense,
is already known.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741
(2007).
We agree with Appellants that the Examiner has not established prima
facie obviousness of claim 46. As pointed out by Appellants, both Backofen
and Bosse-Platiere describe the charge explosive as encased. Bosse-Platiere
describes a shaped charge in which the explosive is loaded into an outer case
24, preferably made of steel (FF11). In Backofen, the explosive is enclosed
by a tamper mass which replaces the steel plates utilized in a shaped charge
(FF2, 5). Based on these two prior art references, it is not apparent why a
person of ordinary skill in the art would have been prompted to place a
caseless charge in a loading tube where the “the explosive [is] contacting the
loading tube when the shaped charge is placed in the cavity” as required by
claim 46. To the contrary, both Bosse-Platiere and Backofen describe
explosives with casings to provide inertial confinement to eject the liner out
as a projectile to perforate walls (see FF1-3, 11). Since the Examiner has
not explained why it would have been obvious to eliminate the casings from
Backofen and Bosse-Platiere, we are compelled to reverse the rejection of
claim 46.
OBVIOUSNESS OVER NICE AND DAVISON
Claims 38, 39, and 83-86 stand rejected under 35 U.S.C. § 103(a) as
obvious over Nice and Davison.

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Findings of Fact
THE NICE PATENT
15. Nice describes a shaped charge retainer comprised of a combustible
material which is pulverized or disintegrated upon detonation of a shaped
charge (Nice, at col. 2, ll. 2-59; at col. 3, ll. 40-52).
16. The shaped charges (14) appear to have an outer case (see Nice, Figs. 1
and 3) as would a typical shaped charge (see Spec. ¶¶ 15-16).
THE DAVISON PATENT
17. Davison describes a shaped charge which comprises a casing (8), a
reactive mass in the casing (2), a liner (6) and an electrical path to the
reactive blend (Davison, at col. 4, ll. 28-33; at col. 6, ll. 55-63; see Fig. 1b).
18. The reactive mass is a blend of metal and an oxidizing material which is
loaded into the shaped charge casing (Davison, at col. 4, ll. 34-38; at col. 5,
l. 34 to col. 6, l. 40) and therefore in contact with it.
19. An electrical pulse is utilized to detonate the material in the reactive
mass (Davison, at col. 4, ll. 42-44).

Claim 38
20. Claim 38 is directed to a “debris free perforating system comprising: (1)
a shaped charge; (2) a combustible loading tube; and (3) “an oxidizer
coating closely adhering to the surface of the loading tube.”
Analysis
The Examiner finds that Nice discloses a combustible loading tube,
but does not disclose an oxidizer closely adhering to the tube’s surface as
recited in claim 38 (Ans. 8; FF20). However, the Examiner finds that
Davison discloses a shaped charge comprising an oxidizer material which,
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“given the thin wall of the casing – at 30 as seen in figures 1a-1b, the
oxidizer material . . . coats the casing . . . and adheres closely to the loading
tube via the casing” (Ans. 11).
We agree with Appellants that the Examiner erred in finding that the
oxidizer described by Davison adheres to the loading tube surface. Davison
teaches a shaped charged with a case enclosing a reactive mass comprising
an oxidizing material (FF17-18). We have interpreted the limitation in claim
38 that the oxidizer is “adhering” to the tube surface to mean that it sticks to
or in is contact with the surface (see “Claim interpretation” supra). The
oxidizing material described in Davison is in contact with the casing (FF18)
– not the loading tube surface as required by claim 38. Thus, this limitation
is not met by Davison as asserted by the Examiner. The Examiner does not
further explain why it would have been obvious to have placed the oxidizer
in Davison’s reactive mass in contact with the loading tube surface described
in Nice. Consequently, we reverse the rejection of claim 38, and claims 39
and 83-86 which depend on it.

OBVIOUSNESS OVER BOSSE-PLATIERE, BACKOFEN, AND NICE
Claims 3-5, 47-49, 87, and 88 stand rejected under 35 U.S.C. § 103(a)
as obvious over Bosse-Platiere, Backofen, and Nice.
Claims 3-5 depend on claim 1; claims 47-49, 87, and 88 depend on
claim 46. As we have reversed the rejection of claims 1 and 46, and Nice
does not supplement the deficiencies in these rejections, we are also
compelled to reverse the rejections of these claims as well.

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OBVIOUSNESS OVER BOSSE-PLATIERE, BACKOFEN, REESE, AND
KAPOOR
Claims 6-9, 41, 42, and 50 stand rejected under 35 U.S.C. § 103(a) as
obvious over Backofen or Bosse-Platiere and Backofen as applied to claims
1, 40, and 46, and further in view of Reese or Kapoor.
Claims 6-9 depend on claim 1; claims 41 and 42 depend on claim 40;
claim 50 depends on claim 46. As we have reversed the rejection of claims
1, 40, and 46, and neither Reese nor Kapoor supplement the deficiencies in
these rejections, we are also compelled to reverse the rejections of these
claims as well.

OBVIOUSNESS OVER BOSSE-PLATIERE, BACKOFEN, AND
KENWORTHY
Claims 10-13 and 51 stand rejected under 35 U.S.C. § 103(a) as
obvious over Bosse-Platiere and Backofen as applied to claims 1 and 46, and
further in view of Kenworthy.
Claims 10-13 depend on claim 1; claim 51 depends on claim 46. As
we have reversed the rejection of claims 1 and 46, and Kenworthy does not
supplement the deficiencies in these rejections, we are also compelled to
reverse the rejections of these claims as well.

OBVIOUSNESS OVER BOSSE-PLATIERE, BACKOFEN, AND YATES
Claims 14, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
obvious over Bosse-Platiere and Backofen as applied to claim 1, and further
in view of Yates.
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Claims 14, 18, and 19 depend on claim 1. As we have reversed the
rejection of claim 1, and Yates does not supplement the deficiencies in this
rejection, we are also compelled to reverse the rejections of these claims as
well.
OBVIOUSNESS OVER BOSSE-PLATIERE, BACKOFEN,
YATES, AND BUDINGER
Claim 15 stands rejected under 35 U.S.C. § 103(a) as obvious over
Bosse-Platiere, Backofen, Yates as applied to claim 14, and further in view
of Budinger.
Claim 15 depends on claim 14 which depends on claim 1. As we
have reversed the rejection of claim 1, and neither Yates nor Budinger
supplements the deficiencies in this rejection, we are also compelled to
reverse the rejection of claim 15 as well.

OBVIOUSNESS OVER NICE, DAVISON, AND SEEGER
Claim 82 stands rejected under 35 U.S.C. § 103(a) as obvious over
Nice and Davison as applied to claim 38, and further in view of Seeger (Ans.
9).
Claim 82 depends on claim 38. As we have reversed the rejection of
claim 38, and Seeger does not supplement the deficiency in this rejection,
we are compelled to reverse the rejection of claim 82.

CONCLUSION
In summary, the rejections of claims 1, 3-15, 18, 19, 38-51, and 82-88
are reversed.
REVERSED
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Application/Control No.

10/157,609
Applicant(s)/Patent Under
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Notice of References Cited
Examiner

David Parsley
Art Unit

3600

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