11769230 (B.P.A.I. Jul. 23, 2012)

Ex Parte Marya et al

Board of Patent Appeals and InterferencesJul 23, 2012

11769230 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MANUEL MARYA, NITIN Y. VAIDYA, and RASHMI BHAVSAR ____________ Appeal 2010-003419 Application 11/769,230 Technology Center 3600 ____________ Before STEFAN STAICOVICI, GAY ANN SPAHN, and HYUN J. JUNG, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Manuel Marya et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-10 and 12-14. The Examiner indicated allowability with respect to claim 11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2010-003419 Application 11/769,230 2 The Claimed Subject Matter The claimed subject matter relates generally to oilfield exploration, production, and testing, and more specifically, to . . . inflatable packer elements.” Spec. 1, para. [0002]. Independent claims 1 and 7, reproduced below, are representative of the subject matter on appeal. 1. A packer system for downhole use, comprising: an elastomer member, wherein the elastomer member is inflatable; and a temporary containment enclosing the elastomer member, wherein the temporary containment comprises a degradable material. 7. A method for deploying a packer, comprising: running a packer system into a well to a predetermined location, wherein the packer system comprises an inflatable packer that is enclosed by a temporary containment, wherein the temporary containment comprises a degradable material; and degrading the degradable material of the temporary containment to set the inflatable packer. The Rejections The following Examiner’s rejections are before us for review. Claims 1, 7-10, and 13 are rejected under 35 U.S.C. § 102(b) as being anticipated by Stuber (US 3,918,523, issued Nov. 11, 1975). Claims 2-6, 12, and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Stuber and Badalamenti (US 7,322,412 B2, issued Jan. 29, 2008). Appeal 2010-003419 Application 11/769,230 3 OPINION Anticipation based on Stuber Independent claim 1 The Examiner determines that Stuber teaches each and every limitation to anticipate independent claim 1. Ans. 3. In particular, the Examiner finds that Stuber discloses a packer system 12 in Figure 4, including: an inflatable elastomer member 24 in Figures 4 and 5; and a temporary containment 22 in Figure 7, which is made of a degradable material. Id. Appellants contend that “independent claim[] 1 . . . recite[s] ‘an inflatable packer,’” and Stuber discloses a swellable packer in the form of a plurality of bracelets 12 that encase a swelling agent 24, which expands after coming into contact with drilling fluid. App. Br. 4 (citing to Stuber, col. 2, ll. 41-52). Appellants also contend that one of ordinary skill in the art would understand an “inflatable packer” to be “[a] type of packer that uses an inflatable bladder to expand the packer element against the casing or wellbore”1 and “[t]hus, limitation of an ‘inflatable packer’ is not anticipated by an element that swells upon exposure to well fluids.” App. Br. 4-5. We cannot agree with Appellants’ contentions because they are based upon the incorrect premise that independent claim 1 recites “an inflatable packer.” Independent claim 1 does not recite an inflatable packer, but rather 1 For a definition of the term “inflatable packer,” Appellants cite to the Schlumberger Oilfield Glossary (accessed at http://www.glossary.oilfield. slb.com/Display.cfm?Term=inflatable%20packer, which was last visited by Appellants on December 4, 2008). Appeal 2010-003419 Application 11/769,230 4 recites “an elastomer member, wherein the elastomer member is inflatable2.” See App. Br., Claims Appendix. The Examiner has cited to Stuber’s elastomeric agent 24 made from soft rubber as constituting the elastomer member in claim 1. Ans. 3. See also, Stuber, col. 3, ll. 33-35 and figs. 4 and 5. Since Stuber’s elastomeric agent 24 is hollow and expands (see Stuber, col. 3, ll. 42-44 and Figs. 7 and 8), it is capable of being inflated in order to meet the recitation of intended use of “wherein the elastomer is inflatable,” and hence we are not persuaded that the Examiner erred in finding that Stuber meets the limitation of claim 1. Accordingly, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Stuber. Independent claim 7 and claims 8-10 and 13 dependent thereon The Examiner determines that Stuber teaches each and every limitation to anticipate independent claim 7. Ans. 3. In particular, the Examiner finds that Stuber discloses “a . . . method of deployment comprising: running a packer system into a well to a predetermined location, wherein the packer system comprises an inflatable packer 12.” Id. Appellants make the same arguments for independent claim 7 as those set forth supra with respect to claim 1. Here, we are persuaded by Appellants’ arguments because independent claim 7 recites a step specifically including an inflatable packer. Since claim 7 specifically recites “an inflatable packer” and since one of ordinary skill in the art would understand “an inflatable packer” to be “a 2 An ordinary and customary definition of the term “inflated” is “being hollow and enlarged or distended.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). Appeal 2010-003419 Application 11/769,230 5 packer that is ‘set and held in place by an element that is inflated with hydraulic pressure’” (App. Br. 5. See also, Spec. 1, para. [0004]), we cannot agree with the Examiner that one of Stuber’s bracelets 12, which includes a swelling or elastomeric agent 24, constitutes an inflatable packer. Indeed, Stuber describes the swelling agent 24 as “expand[ing] to at least twice its size when exposed to the drilling fluid 26 used to drill the hole 16,” and “[t]he swelling agent compound 24 may be any means for expanding which are well known to those skilled in the art of oil-well drilling such as the following: kaolin, gel, sodium montmorillonite or any montmorillonite clay, salts including sodium or calcium chloride, plastics which swell upon heating, cement, and mixtures of the foregoing.” Stuber, col. 2, l. 62 through col. 3, l. 2. Emphasis omitted. Stuber further describes initially compressing elastomeric agent 24 and upon dissolving protective coating 22 allowing the compressed elastomeric agent 24 to expand into contact with the side of drilled hole 16. Stuber, col. 3, ll. 30-44 and Figs. 4 and 5. Although we appreciate that Stuber employs fluid 26 to dissolve protective coating 22, Stuber does not explain anything relating to the use of hydraulic pressure to expand the packer element against the casing or wellbore. Thus, one of ordinary skill in the art would understand that Stuber’s swelling or elastomeric agent 24 to be part of a swellable packer, defined as “[a]n isolation device that relies on elastomers to expand and form an annular seal when immersed in certain wellbore fluids,”3 but not an inflatable packer since no bladder inflatable by hydraulic pressure is disclosed. 3 See Schlumberger Oilfield Glossary (accessed at http://www.glossary. oilfield.slb.com/Display.cfm?Term=swellable%20packer, last visited on July 2, 2012). Appeal 2010-003419 Application 11/769,230 6 Accordingly, we do not sustain the Examiner’s rejection of independent claim 7, and claims 8-10 and 13 dependent thereon, under 35 U.S.C. § 102(b) as anticipated by Stuber. Obviousness based on Stuber and Badalamenti Appellants argue that the Examiner used Badalamenti “for its teachings related to coatings,” and not to cure Stuber’s deficiency in failing to disclose an inflatable packer. App. Br. 6. Claims 2-6 Since claim 1 does not recite an inflatable packer, we did not find Stuber to be deficient with respect to the limitations of claim 1. Thus, we are not persuaded by Appellants’ argument. Accordingly, we sustain the Examiner’s rejection of claims 2-6 under 35 U.S.C. § 103(a) as unpatentable over Stuber and Badalamenti. Claims 12 and 14 Since we found Stuber to be deficient for the reasons discussed supra with respect to independent claim 7 and since Badalamenti does not cure Stuber’s deficiency, we do not sustain the Examiner’s rejection of claims 12 and 14 under 35 U.S.C. § 103(a) as unpatentable over Stuber and Badalamenti. DECISION We affirm the Examiner’s rejections of claims 1-6. We reverse the Examiner’s decision to reject claims 7-10 and 12-14. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART