10280400 (B.P.A.I. Oct. 13, 2010)

Ex Parte Pramann et al

Board of Patent Appeals and InterferencesOct 13, 2010

10280400 (B.P.A.I. Oct. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte JAMES A. PRAMANN II., DIANA ORZECHOWSKI, and PATRICK W. BIXENMAN ________________ Appeal 2009-002910 Application 10/280,400 Technology Center 3600 ________________ Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and ANTON W. FETTING, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 17-24 and 41-47, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim an isolation assembly and method for completing a well. Claim 17 is illustrative: Appeal 2009-002910 Application 10/280,400 2 1. A method for completing a well, comprising: completing a well so as to define an area of fluid ingress into a completion; positioning a conduit within the completion; setting an upper sealing element above the area of fluid ingress, wherein the upper sealing element includes a body defining a production passageway offset from the centerline of the body to form a side of the body thicker than the remainder of the body; setting a lower sealing element below the area of fluid ingress; controlling the flow into the conduit with a valve positioned between the upper and the lower seal assemblies; and routing a control line from the valve through the thicker side of the upper seal assembly body. The References References relied upon by the Examiner Floyd 5,875,852 Mar. 2, 1999 Turley 6,325,144 B1 Dec. 4, 2001 Reference relied upon by the Appellants Young 4,852,649 Aug. 1, 1989 The Rejections The claims stand rejected as follows: claims 17-24, 41 and 43-45 under 35 U.S.C. § 102(b) over Floyd; claims 42 and 47 under Appeal 2009-002910 Application 10/280,400 3 35 U.S.C. § 103 over Floyd; and claim 46 under 35 U.S.C. § 103 over Floyd in view of Turley. OPINION We affirm the rejections. Issue Have the Appellants indicated reversible error in the Examiner’s determination that Floyd discloses a sealing element including a body defining a production passageway offset from the centerline of the body to form a side of the body, through which a control line is routed, thicker than the remainder of the body? Findings of Fact Floyd discloses a sealing assembly including an axial bore (116, which the Examiner relies upon as corresponding to the Appellants’ production passageway (Ans. 2)) offset from the centerline of a packer (112)/seal (118) combination (which the Examiner relies upon as corresponding to the Appellants’ body (Ans. 2-3)) (see Floyd’s Fig. 4) to form a side of the body (packer (112)/seal (118) combination on the right side of the axial bore (116) in Fig. 4) thicker than the remainder of the body (packer (112) on the left side of the axial bore (116) in Fig. 4). A control line bundle (64b) is routed through the seal (118) on the thicker side of the body (Fig. 4). Analysis “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior Appeal 2009-002910 Application 10/280,400 4 art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). The Appellants argue that Floyd’s packer (112) has a production passageway (116) but the production passageway (116) is not offset from the centerline of the packer (112), and that the packer (112) does not have one side that is thicker than its other side (Reply Br. 3). The Appellants argue that Floyd’s seal (118) forms passages for passing control lines but does not form a production passageway and does not have one side thicker than its other side. See id. As set forth above, the Examiner relies upon Floyd’s packer (112)/seal (118) combination as corresponding to the Appellants’ body. In Floyd’s Figure 4 the axial bore (116) (production passageway) is offset from the centerline of the packer (112)/seal (118) combination which is thicker on the axial bore (116)’s right side than on its left side. A control line (64b) is routed through the seal (118) on the thicker side of the packer (112)/seal (118) combination (Fig. 4). The Appellants argue that Floyd’s packer (112) is a multiple bore packer (col. 7, ll. 52-54) and that “[a]s is well known in the art, ‘multiple bore packers’ do not have a body that forms a side of the body thicker than the remainder of the body” (Br. 4). That argument is not well taken because it is merely unsupported attorney argument, and arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appeal 2009-002910 Application 10/280,400 5 The Appellants argue that Young discloses a multiple bore packer that does not have one side thicker than its other side (Br. 4-5). Floyd’s packer (112)/seal (118) combination has a different structure than Young’s seal element (100). Young’s seal element (100) has multiple pieces (104, 105) to more evenly distribute internal stresses and thereby seal better (col. 4, l. 61 – col. 5, l. 26). Young does not indicate any reason why the seal element (100) should have one side thicker than its other side. Floyd’s packer (112)/seal (118) combination has a thicker side to provide for the seal (118) through which the line bundle (64b) passes (col. 7, ll. 62-63; Fig. 4). That is the same reason why one side of the Appellants’ seal assembly (42; Fig. 4) is thicker than its other side (Spec. ¶ 0030). DECISION/ORDER The rejections of claims 17-24, 41 and 43-45 under 35 U.S.C. § 102(b) over Floyd, claims 42 and 47 under 35 U.S.C. § 103 over Floyd, and claim 46 under 35 U.S.C. § 103 over Floyd in view of Turley are affirmed. It is ordered that the Examiner’s decision 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). AFFIRMED kmm SCHLUMBERGER RESERVOIR COMPLETIONS 14910 AIRLINE ROAD ROSHARON, TX 77583