Ex Parte Loretz et al

Patent Trial and Appeal Board

Apr 16, 2014

12062087 (P.T.A.B. Apr. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte IVES LORETZ and NITIN VAIDYA
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Appeal 2012-002349
Application 12/062,087
Technology Center 3600
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Before STEFAN STAICOVICI, PATRICK R. SCANLON, and
WILLIAM A. CAPP, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Ives Loretz and Nitin Vaidya (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting under 35 U.S.C. § 112, first
paragraph, claims 1-6, 8, and 11, as failing to comply with the written
description requirement and under 35 U.S.C. § 103(a) claims 1-6, 8, 11, 14-
21, and 23 as unpatentable over Berzin (US 2009/0139707 A1, pub. Jun. 4,
2009) and Turley (US 6,325,144 B1, iss. Dec. 4, 2001) and of claim 22 as
unpatentable over Berzin, Turley, and Courville (US 7,762,344 B2, iss. Jul.
27, 2010). We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellants’ invention relates to “extending a control line across a
packer.” Spec. 1, para. [0003].
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A packer for providing an annular seal when set in a
wellbore or tubular, the packer comprising:
a tubular mandrel having an outer surface;
a swellable seal member having an inner surface defining
a bore, the swellable seal member coaxially encircling a portion
of the mandrel; and
a control line positioned between the inner surface of the
swellable seal member and the outer surface of the mandrel and
extending across the length of the swellable seal member,
wherein the swellable seal member expands radially upon
contact with an activating agent in the wellbore.

SUMMARY OF DECISION
We AFFIRM.

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ANALYSIS
The Lack of Written Description Rejection
The Examiner found that Appellants’ disclosure fails to describe a
“seal and mandrel being coaxial as claimed.” Ans. 5. According to the
Examiner, “it appears that the seal as disclosed is not coaxial with the
mandrel (as in fig[.] 2) and it is apparently only after expansion that the seal
may be coaxial (as in fig[.] 5).” Id.
In response, Appellants argue that, “[a]lthough the specification does
not specifically use the word coaxially, the specification does support the
claim recitation the swellable seal member coaxially encircling a portion of
the mandrel.” Br. 6. According to Appellants, “[t]he specification supports
the seal member coaxially encircling the mandrel when the seal member is
in the unactivated, non-swelled position, for example in Figs. 2 and 3, as
well as in the swelled position, e.g., Fig. 5.” Id. With respect to Figure 2,
Appellants argue that “the dimensions of gap 28 are exaggerated” and
furthermore, because seal member 14 is first positioned about mandrel 12
and then displaced to form gap 28 in order to dispose control line 16, seal
member 14 coaxially encircles mandrel 12. Id. at 7 (citing Spec. 7, paras.
24-25).
While we appreciate that there is no in haec verba requirement,
nonetheless, newly added claim limitations must be supported in the
specification through express, implicit, or inherent disclosure. The
fundamental factual inquiry is whether the specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. See, e.g., Vas-
Cath, Inc., v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). In this
case, we are not persuaded by Appellants’ position because as the Examiner
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noted, drawings not designated as being drawn to scale (see Spec. 4, para.
14) cannot be relied upon to define precise proportions of elements if the
specification is completely silent on the issue. See Ans. 8; see also
Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, 222 F.3d 951, 956 (Fed. Cir.
2000). As such, neither Figures 2, 3, nor 5 can be relied upon to show
support for a “swellable seal member coaxially encircling a portion of the
mandrel,” as called for by claim 1. Emphasis added. More specifically,
because each of Appellants’ Figures 2 and 3 shows control line 16 within
gap 28, Figures 2 and 3 show an offset position of the mandrel 12 and seal
14. With respect to Appellants’ Figure 5, although we appreciate that it
shows seal member 14 encircling mandrel 12, because the mandrel axis and
the seal axis are not identified, we do not agree with Appellants that Figure 5
provides support for seal member 14 “coaxially encircling” mandrel 12.
Lastly, we agree with the Examiner that even if seal member 14
coaxially encircles mandrel 12 during initial positioning, as Appellants urge,
once control lines 16 are positioned within gap 28, the coaxial relationship
of seal 14 and mandrel 12 is destroyed in order to form gap 28. See Ans. 9.
We thus conclude that Appellants’ Specification does not reasonably
convey to those skilled in the art that Appellants had possession of the
subject matter of claims 1-6, 8, and 11 as of the filing date of the present
application. Therefore, we sustain the rejection of claims 1-6, 8, and 11
under 35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.

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The obviousness rejections
Claims 1, 3-6, 8, 11, 14, 16, 18, 20, 21, and 23
Appellants have not presented arguments for the patentability of
claims 3-6, 8, 11, 14, 16, 18, 20, 21, and 23 apart from claim 1. See Br. 8-
12. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we
select claim 1 as the representative claim to decide the appeal of the
rejection of these claims, with claims 3-6, 8, 11, 14, 16, 18, 20, 21, and 23
standing or falling with claim 1.
Appellants argue that “[t]he cited references do not support a
motivation to combine as asserted by the Examiner without using improper
hindsight.” Br. 8. According to Appellants, “the cited art does not support a
motivation to combine . . . because there is not a known and finite number of
possible approaches to select and to solve the problem associated with
providing control and/or communication with components below a packer.”
Id. at 9. In other words, Appellants argue that the Examiner improperly
employed an “obvious to try” rationale and did not make the necessary
findings of fact to support the conclusion of obviousness.
We are not persuaded by Appellants’ position because it is not
apparent where the Examiner has employed the alleged “obvious to try”
standard. See Ans. 5-7. Specifically, the Examiner found that Berzin
discloses a packer including a mandrel 12 and a swellable seal member 16
coaxially encircling mandrel 12, but fails to disclose a control line. Id. at 5,
6; see also Berzin, figs. 1 and 3. The Examiner further found that Turley
discloses a method and a packer for extending a control line 30 by
positioning it between the inner surface of a seal member 20 and the outer
surface of a mandrel. Id. at 6; see also Turley, fig. 1. The Examiner then
concluded that it would have been obvious for a person of ordinary skill in
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the art “to modify the packer and methods of Berzin et al. to include a
control line as taught by Turley et al. in order to provide control and/or
communication with components below a packer.” Id. at 7 (citing Turley,
col. 1, ll. 18-25). As such, the Examiner has acknowledged the factual
inquiries necessary to support the conclusion of obviousness and provided
the necessary factual support to reach a conclusion of obviousness.
Moreover, the Examiner has provided a reason with rational underpinning,
namely, “in order to provide control and/or communication with components
below a packer.” See id. at 7; In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)). Appellants have not persuasively argued that the
Examiner’s conclusion lacks rational underpinning.
We are also not persuaded by Appellants’ arguments regarding the
individual teachings of Berzin and Turley. See Br. 9-10. Appellants cannot
show nonobviousness by attacking Berzin and Turley individually when the
rejection as articulated by the Examiner is based on a combination of Berzin
and Turley. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Lastly, we are not persuaded by Appellants’ arguments with regard to
the teachings of Freyer (US 2007/0012436 A1, pub. Jan. 18, 2007) and
Lembcke (US 6,173,788 B1, iss. Jan. 16, 2001) (see Br. 11-12) because
these references are not part of the Examiner’s proposed rejection. See
Ans. 5.
In conclusion, for the foregoing reasons, we are not persuaded that the
Examiner relied on impermissible hindsight, as Appellants urge, rather than
the knowledge of those skilled in the art at the time of the invention.
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Accordingly, we sustain the rejection under 35 U.S.C. § 103(a) of
independent claim 1, and claims 3-6, 8, 11, 14, 16, 18, 20, 21, and 23 falling
with claim 1, as unpatentable over Berzin and Turley.

Claims 2, 15, 17, and 19
Appellants argue that, “[n]either of the cited references enable[s]
positioning the control lines of Turley et al. between the swellable seal
member of Berzin et al. and the mandrel.” Br. 13. While Appellants are
correct that Berzin fails to disclose a control line positioned in a gap between
a mandrel and a swellable seal, the Examiner acknowledged this precise
point and relied upon Turley as disclosing this element of the claim. Ans. 6-
7. Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Moreover, we agree with the Examiner that in “figures 2 or 3 of
Turley et al., the control lines are not in any slot.” Ans. 10. We thus
likewise sustain the rejection of claims 2, 15, 17, and 19 over the combined
teachings of Berzin and Turley.

Claim 22
Appellants rely on the same arguments as presented supra with
respect to the rejection of claims 1, 3-6, 8, 11, 14, 16, 18, 20, 21, and 23.
Br. 13. Moreover, Appellants’ statements merely reiterate the claim
limitations and do not present separate arguments for patentability of these
claims. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
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patentability of the claim.”). Accordingly, we also sustain the rejection of
claim 22 as unpatentable over Berzin, Turley, and Courville.

SUMMARY
The Examiner’s decision to reject claims 1-6, 8, 11, and 14-23 is
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)(1)(iv).

AFFIRMED

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