Ex Parte Patel

Board of Patent Appeals and Interferences

Sep 23, 2009

10710753 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SCHLUMBERGER TECHNOLOGY CORPORATION
____________________

Appeal 2009-005581
Application 10/710,753
Technology Center 3600
____________________

Decided: September 23, 2009
____________________

Before JAMESON LEE, RICHARD TORCZON, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Schlumberger
Technology Corporation [hereinafter STC], under 35 U.S.C. § 134(a) from a
final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
References Relied on by the Examiner
Murray 5,862,865 Jan. 26, 1999
Ringgenberg 2002/0023746 A1 Feb. 28, 2002
Williamson 6,668,936 B2 Dec. 30, 2003

The Rejections on Appeal
The Examiner rejected claims 1-5, 7, and 19-23 under 35 U.S.C.
§ 102(b) as anticipated by Williamson.
The Examiner rejected claim 14 under 35 U.S.C. § 102(b) as
anticipated by Ringgenberg.
The Examiner rejected claims 6 and 8-13 under 35 U.S.C. § 103(a) as
unpatentable over Williamson and Murray.
The Examiner rejected claims 15-18 under 35 U.S.C. § 103(a) as
unpatentable over Ringgenberg, Williamson and Murray.

The Invention
The invention relates to a valving system for preventing cross flow
between hydrocarbon formations that intersect a wellbore. (Spec. Abstract.)
Claim 1 is reproduced below (App. Br. 12 Claims App’x):
A system for preventing cross-flow between at least two
formations intersecting a wellbore, comprising:

a flow valve controlling the flow from one of the formations;
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the flow valve actuated with a hydraulic control line;

a cross-flow prevention valve selectively preventing flow
between the formations; and

the cross-flow prevention valve actuated with the hydraulic
control line.
B. ISSUES
1. Has STC shown that the Examiner was incorrect in finding that
Williamson discloses a flow valve and a cross-flow prevention valve?
2. Has STC shown that the Examiner was incorrect in finding that
Williamson discloses a single hydraulic line for actuating a flow valve and a
cross-flow prevention valve?
3. Has STC shown that the Examiner was incorrect in finding that
Ringgenberg’s check valve 104 is a second multi-position flow valve
controlling the flow from a next adjacent active formation?
C. FINDINGS OF FACT
1. Williamson discloses a hydraulic control system for operating
multiple well tool assemblies within a well bore. (Williamson Abstract.)

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2. Williamson’s Figure 1 is reproduced below:

Figure 1 above depicts a hydraulic control system.

3. Williamson discloses that each of tool assemblies (i.e., valves) 12, 14,
16, and 18 are interconnected in a tubular string 20 of a wellbore 22 and act
to control the flow of fluid from one of formations 24, 26, 28, and 30. (Id. at
3:10-18.)
4. Williamson states the following (Id. at 3:32-39):
One or more control lines 34, or other type of flowpaths, extend to a
remote location, such as the earth’s surface, or to a remote location
within the wellbore 22, etc. The control module 32 places one or more
of the control lines 34 in fluid communication with one or more lines
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36, or other types of flowpaths, extending to the tool assemblies 12,
14, 16, 18 when it is desired to operate selected ones of the tool
assemblies, for example, to open or close one or more of the tool
assemblies.

5. Williamson also discloses that (Id. at 1:18-22):
[I]t is uneconomical and practically unfeasible to run separate
hydraulic control lines from the surface to each one of numerous well
tool assemblies. Instead, the number of control lines extending
relatively long distances should be minimized as much as possible.

6. STC’s specification describes “multi-position valves” as valves “that
have a number of partially open positions between fully open and fully
closed[]” (Spec. ¶ 0001) and valves “that have at least one position between
fully open and fully closed[]” (Spec. ¶ 0013).
7. Ringgenberg discloses a method and apparatus for testing
subterranean formations in which fluids from a first formation are flowed
into a tubular string in a well and disposed of by injecting the fluids into a
second formation. (Ringgenberg 1: ¶ 0009.)
8. Ringgenberg’s check valve 104 simply releases fluid into disposal
formation 84 in response to pressure. (Id. at 4: ¶ 0045.)
9. Ringgenberg also discloses that disposal formation 84 may receive
any volume of fluid from test formation 82. (Id.)
D. PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses
all elements of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990).
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During examination, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Prater, 415 F.2d 1393,
1404 (CCPA 1969).
We look to the specification as the single best guide in determining
the meaning of a claim term. Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005).
E. ANALYSIS
Claims 1, 14, and 19 are independent claims. Dependent claims 2-5,
7, and 20-23 are ultimately dependent on, and argued collectively with, one
of claims 1 and 19. Claims 6 and 8-13 are urged as patentable based on their
ultimate dependence on claim 1 “as well as for their unique subject matter
recited in these dependent claims.” (App. Br. 9:4-6.) That quoted statement
is not an argument for patentability of claims 6 and 8-13 apart from the
patentability of claim 1. “A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.” 37 C.F.R. § 41.37(c)(vii). STC’s statement does even less. We
group claims 2-13 and 20-23 with independent claims 1 and 19. Claims 14-
18 are separately argued.
Claims 1-13 and 19-23
The Examiner rejected independent claims 1 and 19 as anticipated by
Williamson. Claim 1 is a system claim that requires a “flow valve actuated
with a hydraulic control line” and a “cross-flow prevention valve” that is
“actuated with the hydraulic control line.” (App. Br. 12 Claims App’x.)
Claim 19 is a method claim that corresponds to claim 1 and includes the
following steps (App. Br. 14 Claims App’x):
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controlling the flow from one of the formations with a flow
valve;

selectively preventing flow between the formations with a
cross-flow prevention valve; and

actuating the cross-flow prevention valve and the flow valve
with a single hydraulic line.

STC first contends that Williamson does not disclose a flow control
valve combined with a cross-flow prevention valve. (App. Br. 6:20-24.) In
particular, according to STC, Williamson does not disclose a cross-flow
prevention valve.
During examination, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Prater, 415 F.2d at
1404. STC’s specification does not define the term “cross-flow prevention
valve” as having any special meaning or as requiring any specific structure.
A “cross-flow prevention valve” is a valve positioned and operated to
prevent the cross-flow of fluid between formations.
The Examiner found that Williamson discloses a wellbore having four
valve assemblies 12, 14, 16, and 18. (Ans. 3:18-19.)

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Williamson’s Figure 1 is reproduced below:

Figure 1 above depicts a hydraulic control system.

Williamson discloses that each of tool assemblies (i.e., valves) 12, 14,
16, and 18 are interconnected in a tubular string 20 of a wellbore 22 and act
to control the flow of fluid from one of formations 24, 26, 28, and 30.
(Williamson 3:10-18.) The Examiner found that each of those valves are
flow control valves for their associated formation and are also valves that
prevent cross-flow of fluid to the other formations. (Ans. 3:21-4:1.) In
particular, the Examiner explained that (Ans. 7:3-7):
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Williamson discloses a first valve 18 associated with formation
30 and a number of other valves 12, 14 and 16 that selectively prevent
cross flow between formation 30 and formations 24, 26 and 28,
respectively. They are not explicitly disclosed as for use in preventing
cross flow between formations, but do prevent cross flow when they
are closed.

The Examiner’s explanation is reasonable. Each of the valves
disclosed in Williamson, when open, operates as a flow control valve for its
associated formation, and, when closed, operates to prevent cross-flow
between the other formations that intersect the wellbore. We reject STC’s
argument that Williamson does not disclose a “cross-flow prevention valve.”
STC also contends that Williamson does not disclose valves that are
actuated by a single hydraulic line. (App. Br. 6:23-7:3.) According to STC,
Williamson discloses that each of its valves is connected to a separate
hydraulic line and thus requires multiple hydraulic control lines for
controlling its valves. (App. Br. 5:21-6:11.)
In rejecting STC’s claims 1 and 19, the Examiner determined that
Williamson discloses one embodiment in which a single control line 36 is
used to actuate each of the valves, 12, 14, 16, and 18. (Ans. 7:10-12.)
Williamson states the following (Williamson 3:32-39):
One or more control lines 34, or other type of flowpaths, extend to a
remote location, such as the earth’s surface, or to a remote location
within the wellbore 22, etc. The control module 32 places one or more
of the control lines 34 in fluid communication with one or more lines
36, or other types of flowpaths, extending to the tool assemblies 12,
14, 16, 18 when it is desired to operate selected ones of the tool
assemblies, for example, to open or close one or more of the tool
assemblies.

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Thus, Williamson discloses that its hydraulic control system may
include as few as a single control line 34 which is fluidly connected to
control module 32 and a single control line 36 that extends from the control
module to the tool assemblies or valves 12, 14, 16, and 18. Williamson’s
Figure 1, reproduced above, shows only a single hydraulic line connected to
all the valves.
Furthermore, Williamson discloses that (Williamson 1:18-22):
[I]t is uneconomical and practically unfeasible to run separate
hydraulic control lines from the surface to each one of numerous well
tool assemblies. Instead, the number of control lines extending
relatively long distances should be minimized as much as possible.

In light of those teachings, we reject STC’s argument that Williamson
requires separate hydraulic control lines for each of its valves. That
argument disregards Williamson’s specific disclosure of using “one” or
more control lines to control module 32 and “one” or more control lines
from control module 32 to the valves. That STC supports its argument by
pointing to portions of Williamson that describe other embodiments of its
invention having more than one control line 36 is misdirected. STC has not
shown that the Examiner erred in determining that Williamson’s
embodiment with a single hydraulic line satisfies the corresponding
hydraulic line requirements of STC’s claims 1 and 19.
For the foregoing reasons, we sustain the rejection of claims 1-5, 7,
and 19-23 as anticipated by Williamson. We also sustain the rejection of
claims 6 and 8-13 under 35 U.S.C. § 103(a) as unpatentable over Williamson
and Murray.
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Claims 14-18
The Examiner rejected independent claim 14 as anticipated by
Ringgenberg. Claims 15-18 are urged as patentable based on their
dependence, either directly or indirectly, on claim 14 and “for the unique
subject matter recited in these dependent claims.” (App. Br. 10:6.) As noted
above, that quoted statement is not an argument for the patentability of
claims 15-18 apart from claim 14. 37 C.F.R. § 41.37(c)(vii). We group
claims 15-18 with claim 14. Claim 14 is reproduced below (App. Br. 13
Claims App’x):
A system for preventing cross-flow between at least two formations
intersecting a wellbore, comprising:

a first multi-position flow valve controlling the flow from a first
formation;

a second multi-position flow valve controlling the flow from a
next adjacent active formation; and

a cross-flow prevention valve disposed between the first multi-
position flow valve and the second multi-position flow valve to
selectively prevent flow between the first formation and the next
adjacent active formation.

STC disputes that Ringgenberg discloses “a second multi-position
flow valve controlling the flow from a next adjacent active formation.”
(App. Br. 8:3-9.)
In rejecting claim 14, the Examiner stated (Ans. 4:13-18):
Ringgenberg discloses a system 20 for preventing cross-flow in
a wellbore comprising first multi-position flow valve 30 that is “used
to selectively permit fluid communication between the wellbore 12
[from formation 82] and the interior of fluid assembly 20” (par. 0025);
second multi-position flow valve 104 controlling flow from formation
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84 into assembly 20; valve 40 preventing flow between the two
formations 82 and 84.

STC contends that Ringgenberg’s element 104 is not a multi-position
valve that controls flow from a formation. In particular, STC urges that
element 104 is simply a one-way check valve that allows fluid to be
deposited into “disposal formation 84” in response to pressure exerted on the
check valve. (App. Br. 8:5-11; Reply Br. 7:14-23.)
In response, the Examiner states “[w]hile it is true that the valve 104
is a check valve, the valve 104 does in fact control flow out of the formation
(in that it prevents it completely) and is a multi-position valve as it has open
and closed positions.” (Ans. 7:16-19.)
We focus first on the meaning of “multi-position valve.” We look to
the specification as the single best guide in determining the meaning of a
claim term. Phillips, 415 F.3d at 1315. STC’s specification describes
“multi-position valves” as valves “that have a number of partially open
positions between fully open and fully closed[]” (Spec. ¶ 0001) and valves
“that have at least one position between fully open and fully closed[]”
(Spec. ¶ 0013). In light of the specification, we construe “multi-position
valve” as meaning a valve that has at least one partially open position
between fully open and fully closed.
The Examiner’s determination that Ringgenberg’s check valve 104 is
a “multi-position valve” because it has an open and closed position is not
reasonably consistent with STC’s specification. Here, a multi-position valve
must have at least one partially open position. The Examiner does not point
to any portion of Ringgenberg as disclosing that check valve 104 has any
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open position other than fully open. Ringgenberg’s check valve 104 is not a
multi-position valve.
Furthermore, according to claim 14, the multi-position valve must
also be “controlling the flow from a next adjacent active formation[.]”
Ringgenberg discloses that its check valve 104 simply releases fluid into
disposal formation 84 in response to pressure. (Ringgenberg 4: ¶ 0045.)
Ringgenberg also discloses that disposal formation 84 may receive any
volume of fluid from test formation 82. (Id.) Evidently, the disposal
formation that is disclosed in Ringgenberg is of sufficient size and has
sufficient empty space to receive large quantities of fluid. Given the size of
the disposal formation, check valve 104 may not have any interaction with
the fluid once fluid is released into that formation. A stopped flow from that
disposal formation cannot be presumed. The Examiner does not point us to
any portion of Ringgenberg which describes such a stopped flow from the
disposal formation.
We do not sustain the rejection of claim 14 as anticipated by
Ringgenberg. Claims 15-18 are dependent on claim 14 and were rejected as
unpatentable over Ringgenberg, Williamson, and Murray. The Examiner’s
analysis of claims 15-18 is directed to features added by those claims and
does not make up the above-noted deficiencies with respect to claim 14. We
also do not sustain the rejection of claims 15-18.
F. CONCLUSION
1. STC has not shown that the Examiner was incorrect in finding
that Williamson discloses a flow valve and a cross-flow prevention valve.
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2. STC has not shown that the Examiner was incorrect in finding
that Williamson discloses a single hydraulic line for actuating a flow valve
and a cross-flow prevention valve.
3. STC has shown that the Examiner was incorrect in finding that
Ringgenberg’s check valve 104 is a second multi-position flow valve
controlling the flow from a next adjacent active formation.
G. ORDER
The rejection of claims 1-5, 7, and 19-23 under 35 U.S.C. § 102(b) as
anticipated by Williamson is affirmed.
The rejection of claims 6 and 8-13 under 35 U.S.C. § 103(a) as
unpatentable over Williamson and Murray is affirmed.
The rejection of claim 14 under 35 U.S.C. § 102(b) as anticipated by
Ringgenberg is reversed.
The rejection of claims 15-18 under 35 U.S.C. § 103(a) as
unpatentable over Ringgenberg, Williamson and Murray is reversed.

AFFIRMED-IN-PART

KMF

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