Ex Parte McKee

Board of Patent Appeals and Interferences

Aug 30, 2011

11115610 (B.P.A.I. Aug. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte L. MICHAEL MCKEE
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Appeal 2010-001925
Application 11/115,610
Technology Center 3600
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Before KEN B. BARRETT, GAY ANN SPAHN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001925
Application No. 11/115,610

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a), from a final
rejection of claims 17-30. Claims 17-22, 24, 25 and 27-30 are appealed1.
The real party in interest is Schlumberger Technology Corporation. Claims
1-16 were withdrawn from consideration by the Examiner pursuant to a
restriction requirement. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

References Relied on by the Examiner
Pruyn US 1,188,485 Jun 27, 1916
Isennock US 6,264,244 B1 Jul. 24, 2001
Kobylinski US 6,298,921 B1 Oct. 9, 2001
Luft US 2004/0184871 A1 Sep. 23, 2004

The Claimed Subject Matter
The claimed subject matter is directed to a method for connecting and
deploying coiled tubing such as that used in a well. Independent claim 17 is
illustrative of the claims on appeal and is reproduced below.

1 While claims 23 and 26 have been finally rejected (Final Office Action
mailed Oct. 16, 2008), Appellant states, in a Response to Notice of Non-
Compliant Appeal Brief, mailed Apr. 23, 2009, that “claims 23 and 26 are
not part of this appeal” (see also App. Br. 5). In the Examiner’s Answer,
mailed Jul. 6, 2009, the Examiner states that the grounds of rejection of
claims 23 and 26 [the Examiner mistakenly identifies claim 25] “have not
been withdrawn by the examiner, but they are not under review on appeal
because they have not been presented for review in the appellant’s brief”
(Ans. 3). Claims 23 and 26 may be canceled by the Examiner pursuant to
the Manual of Patent Examining Procedure (MPEP) § 1215.03. We do not
address claims 23 and 26 in this Decision on Appeal.
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Application No. 11/115,610

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17. A method comprising:
providing a coiled tubing connector having a body with a
longitudinal bore therethrough, the body having a first end section and
a second end section and a stiff section disposed between the first and
the second end sections;
disposing the first end section within a first coiled tubing;
disposing the second end section within a second coiled tubing;
securing the stiff section to the inner diameter of each of the
first and second coiled tubings, thereby forming a connected tubing;
winding the connected tubing on a coiled tubing reel;
deploying the connected tubing in a wellbore, comprising
unwinding the connected tubing from the reel; and
avoiding formation of a hinge point between the first end
section and the first coiled tubing as a segment of the connected
tubing which contains the first end section and the first coiled tubing
is unwound from the reel, comprising providing a first tapered
external surface on the first end section to cause the first coiled tubing
to contact the first tapered external surface along a first area of contact
that translates along the first tapered external surface as the first coiled
tubing straightens.

The Rejections on Appeal
1. Claims 17-22, 24, 25 and 27-30 (i.e., all claims on appeal) are rejected
under 35 U.S.C. § 103(a) as unpatentable over Isennock and Luft (Ans. 4).
2. Claim 17-22, 27 and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kobylinski, Pruyn and Luft (Ans. 5).

ISSUE
Has the Examiner established that a tapered connector, known at the
time of the invention to connect coiled tubing wound about a reel, would
inherently avoid the formation of a hinge point between the tapered section
and the tubing as the tubing is unwound from the reel?

Appeal 2010-001925
Application No. 11/115,610

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ANALYSIS
Regarding the Examiner’s rejection under Isennock and Luft,
Appellant argues all the claims on appeal together (see App. Br. 10-12). We
select independent method claim 17 for review. Appellant also argues
claims 24, 28 and 30 together under a separate heading and these arguments
will also be addressed (see App. Br. 12-13). Regarding the Examiner’s
rejection under Kobylinski, Pruyn and Luft, Appellant argues claims 17-22,
27 and 29 together which will be addressed infra (see App. Br. 13-15).

The Subject Matter of Independent Method Claim 17 is Obvious in
view of Isennock and Luft.
Appellant’s claim 17 requires the step of avoiding the formation of a
hinge by providing a tapered external surface on the connector which, as the
coiled tubing is unwound, causes “the first coiled tubing to contact the first
tapered external surface along a first area of contact that translates along the
first tapered external surface as the first coiled tubing straightens.” The
Examiner relies on Isennock for disclosing all the recited steps in claim 17,
except that Isennock does not “teach winding the connected tubing on a
coiled tubing reel, or explicitly teach avoiding formation of a hinge point by
using the tapered surfaces” (Ans. 4-5). With respect to the claimed
“winding” step, the Examiner references Isennock’s Figure 4 concluding
that “the use of a reel to spool the connected tubing” is “inherent to
Isennock” (Ans. 5)2. Further, the Examiner relies on Luft for its “teaching
of spooling a connected tubing” and for its teaching of the undesirability of
hinge points (Ans. 5 citing Luft ¶¶ [0031] and [0028]). With respect to the

2 Isennock is silent regarding winding tubing on a reel but Isennock states
that “coiled tubing may be spooled from a drum or reel” (Isennock 5:65).
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Application No. 11/115,610

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claimed step of “avoiding formation of a hinge point,” the Examiner also
considers this limitation “inherent to Isennock” since Isennock discloses a
tapered end section and “the coiled tubing, in use, would bend and contact
the tapered surfaces as described” (Ans. 4-5).
Appellant contends that Isennock “does not specifically discuss”
having a beveled end or any translation “along the beveled end as a coiled
tubing into which the end is inserted bends or straightens” (App. Br. 10). It
is well settled that one skilled in the art is able to read a reference for all that
it teaches (Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547,
1551 (Fed. Cir. 1989)). Hence, while Isennock may not “specifically
discuss” having a beveled end, Isennock’s Figures 1-3 and 5 illustrate
beveled end 76 which the Examiner references (see Ans. 4).
Appellant also contends that with respect to Isennock, “there is no
reason to believe that the beveled end ever contacts the coiled tubing when
the coiled tubing bends or straightens” (App. Br. 10). It is further well
settled that where “the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product” (In re Best, 562 F.2d 1252, 1255 (CCPA 1977)).
Appellant acknowledges that Isennock discloses a first tapered external
surface (App. Br. 10; Isennock Figs. 1-3 and 5). Accordingly, the Examiner
has shown identical or substantially identical structure and Appellant has not
provided any credible evidence, declaration or affidavit that Isennock’s
tapered edge does not necessarily or inherently contact the coiled tubing as
claimed.
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Application No. 11/115,610

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Appellant contends that “the § 103 rejection of independent claim 17
as being unpatentable over Isennock in view of Luft is deficient” because the
Examiner has failed to explain “why one of skill in the art in possession of
Luft and Isennock would have avoided a hinge point by providing a first
tapered outer surface on the first end section of a first tubing connector”
(App. Br. 11, see also 12). The Examiner’s rejection of this “avoiding” step
is not based on an obvious combination of Isennock and Luft as contended,
but rather this step is considered inherently performed by the structure
disclosed in Isennock during normal or typical usage in an identical context
to that claimed.
Appellant also contends that while “Luft discloses that a hinge point
may develop in a coiled tubing connection”, “Luft fails to disclose or lead
one of skill in the art to the solution that is set forth in the claimed
invention” (App. Br. 12). Luft was relied on by the Examiner for its
teaching that hinge “hot spots” should be avoided and that it is desirable for
bending stresses to remain “as uniform as possible over the length of the
connector 8 and adjoining coiled tubing” (Luft ¶ [0028]; see also Ans. 5).
Luft was not relied on by the Examiner, as Appellant asserts, “to disclose the
specific solution of using a tapered surface for purposes of preventing the
formation of a hinge point” (App. Br. 11-12).
Appellant also argues method claims 24, 28 and 30 together (App. Br.
12-13). However, Appellant presents no further argument apart from that
which has already been advanced (App. Br. 13). Accordingly, based on the
record presented, Appellant’s contentions are not persuasive and the
Examiner’s decision to reject claims 17-22, 24, 25 and 27-30 as obvious
over Isennock and Luft is affirmed.
Appeal 2010-001925
Application No. 11/115,610

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The Rejection of Claims 17-22, 27 and 29 as being obvious over
Kobylinski, Pruyn and Luft.
We do not reach the Examiner’s rejection of claims 17-22, 27 and 29
under 35 U.S.C. § 103(a) as being unpatentable over Kobylinski, Pruyn and
Luft separately, because our decision to sustain the rejection of claims 17-
22, 24, 25 and 27-30 as being unpatentable over Isennock and Luft is
dispositive as to all of the claims involved in the rejection based on
Kobylinski, Pruyn and Luft. “The affirmance of the rejection of a claim on
any of the grounds specified constitutes a general affirmance of the decision
of the examiner on that claim” (37 C.F.R. § 41.50(a)(1)).

CONCLUSION OF LAW
The Examiner established that a tapered connector, known at the time
of the invention to connect coiled tubing wound about a reel, would
inherently avoid the formation of a hinge point between the tapered section
and the tubing as the tubing is unwound from the reel.

DECISION
In view of the foregoing, the decision of the Examiner to reject claims
17-22, 24, 25 and 27-30 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

MP