Ex Parte Thorn

Patent Trial and Appeal Board

Apr 27, 2018

14408507 (P.T.A.B. Apr. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/408,507
49431 7590
Locke Lord LLP
P.O. Box 55874
Boston, MA 02205
FILING DATE FIRST NAMED INVENTOR
12/16/2014 Adrian D. Thorn
05/01/2018
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2012-IP-056812 Ul US 3213
EXAMINER
ANDREWS, DAVID L
ART UNIT PAPER NUMBER
3672
NOTIFICATION DATE DELIVERY MODE
05/01/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIAN D. THORN1
Appeal2018-003402
Application 14/408,507
Technology Center 3600
Before STEVEN D. A. McCARTHY, JILL D. HILL, and
LISA M. GUIJT, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Adrian D. Thom ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 3, 4, 13, 14, 23, 24, and 31.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART, designating our affirmance a NEW
GROUND pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant identifies the Real Party in Interest as Halliburtion Engergy
Services, Inc. Appeal Br. 3.
Appeal2018-003402
Application 14/408,507
BACKGROUND
Independent claims 3, 4, 13, 14, 23, 24, and 31 are pending. Claim
31, reproduced below, illustrates the claimed invention.
31. A method of operating a well tool, the method
compnsmg:
a swellable material of the well tool swelling in a
subterranean well, in response to water in the well entering the
swellable material, wherein swelling of the swellable material
in an axial direction of the well tool aligns a radial opening in a
valve with a radial opening in the well tool to permit fluid flow
through the radial openings; and
a semi-permeable barrier layer permitting the water to
pass through the barrier layer and into the swellable material,
wherein the barrier layer prevents ions of salt dissolved by the
water from passing out of the swellable material.
REJECTIONS
I. Claim 31 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Richards (US 2008/0283238 Al, pub. Nov. 20, 2008). Final
Act. 3.
II. Claims 3, 4, 13, 14, 23, and 24 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by, or in the alternative under 35 U.S.C. § 103(a) as
unpatentable over Richards. Id. at 3--4.
ANALYSIS
Rejection I
The Examiner finds that Richards discloses a method of operating a
well tool, comprising swellable material (i.e., actuator 226) swelling in
response to well water entering the swellable material, the swelling
occurring in an axial direction of the well tool to align a valve opening 232
with a radial opening 236 "to permit fluid flow through the radial openings
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Application 14/408,507
(fig 3a vs fig 3b )." Final Act. 3. The Examiner also finds that Richards
discloses a semi-permeable barrier layer permitting water to pass into the
swellable material, and inhibiting the passage of salt ions dissolved by the
water. Id. (citing Richards i-fi-141, 49).
Appellant argues that Richards instead discloses that swelling of the
swellable material closes off radial opening 232 to stop fluid flow
therethrough, and therefore does not anticipate claim 31. Appeal Br. 12.
The Examiner disagrees, arguing that, in Richards, "swelling of the
swellable material creates 'an increased restriction to flow, without
completely preventing flow. Thus, some of unwanted fluid 240 is
permitted to flow through openings 236 into base pipe 218."' Ans. 3
(citing Richards i1 48).
Appellant replies that, in Richards, "a small amount of unwanted
liquid nonetheless sneaks through [Richards' valve after swelling]," and
therefore, Richards' structure does not meet the claim language "aligns a
radial opening in a valve with a radial opening in the well tool." Reply Br.
12. According to Appellant, Richards' structure is the opposite of what
claim 31 recites, because Richards' swelling restricts flow and does not align
any holes, and leakage is not alignment. Id.
Appellant has the better argument. As shown in Richards' Figure 3B,
when an undesired fluid 240 is produced, valve assembly 220 is actuated to
its closed or choking position by sliding sleeve 228, such that openings 232
are blocked by the outer surface of tubular fluid passageway 222, and fluid
cannot flow from opening 232 through opening 236. See Richards Fig. 3B,
i148. Blocking an opening is not aligning it with another opening to permit
fluid passage between the openings. Richards simply does not disclose
swelling of material 226 causing any alignment. Incidental leakage does not
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Application 14/408,507
disclose or suggest alignment. We, therefore, do not sustain the rejection of
claim 31 as anticipated by Richards.
Rejection II
In Rejection II, the Examiner's findings are based on the disclosure of
the embodiment of Richards' Figures 7 A and 7B (discussed in paragraphs
67-71 of Richards), and additionally refer to Richards' paragraph 41, which
discusses the embodiment of Richards' Figures 3A and 3B. See Final Act.
4. The Examiner finds that Richards discloses a well tool, system, and
method of operating a well tool comprising a swellable material 626 that
swells in response to contact by water, and a semi-permeable barrier 622,
624 permitting water to pass through to the swellable material and
preventing passage of salt ions, wherein the swellable material has an
annular shape and the barrier layer envelops the swellable material on all
external surfaces of the annular shape. Final Act. 4 (citing Richards i-f 41,
Fig. 7 A). The Examiner determines that, in the alternative, it would have
been obvious to modify Richards "to envelop all surfaces of the swellable
material ... with the barrier layer (as in paragraph 41) in order to maintain
the salts within the swellable material to maintain the swelled condition."
Id.
Appellant argues claims 3, 4, 13, 14, 23, and 24 as a group. We select
claim 3 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claims 4, 13, 14, 23,
and 24 stand or fall with claim 3. Claim 3 does not recite the alignment of
claim 31.
Appellant argues that Richards does not disclose that elements 622
and 624 of the embodiment of Figures 7 A and 7B are a semi-permeable
barrier layer or have anything to do with a semi-permeable layer. Appeal
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Application 14/408,507
Br. 13. According to Appellant, Richards' Figures 7 A and 7B show that
"the activating fluid for the swellable member 626 reaches member 626 not
by semi-permeability of passageway 622 or support member 624, but
through direct contact as the activating fluid enters the opening depicted in
Figs. 7 A and 7B on the upstream end of support member 624." Id.
The Examiner responds that Richards' swellable material 626
"inherently includes a semi-permeable barrier, at least at the exposed portion
where the fluid enters the swellable material (since as described in paragraph
41 this would apparently be necessary for retaining the swelled condition)."
Ans. 4. The Examiner clarifies that the rejection "is based on a barrier
which is a combination of the semi-permeable barrier as described on the
swellable material and the additional barrier portions 624 and 622." Id.
According to the Examiner, the combination of the inherent semi-permeable
barrier in Richards and the additional barriers 622, 624 at least at the
exposed portion of the swellable material "(at the inlet through the top of
624) would create semi-permeable barrier as claimed, which completely
envelopes the swellable material on all external surfaces of the annular
shape." Id.
Appellant replies that the Examiner's argument is unclear, because
"Richards does not describe items 624 (support member) and 622
(passageway) as barriers at all," and "[t]he Examiner has not proven that
semi-permeable membranes are even contemplated in paragraph 71 of
Richards, let alone that the semi-permeable membrane completely envelops
the swellable material on all external surfaces as in the claims." Reply Br.
13. Appellant further contends that the Examiner's proposed link between
Richards' paragraphs 41 and 71 is unreasonable. Id.
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Application 14/408,507
Paragraph 41 of Richards informs the skilled artisan that the actuator
disclosed in Richards' many embodiments (e.g., 126, 226, 326, 426, 526,
626) is a swellable material, such as a salt polymer actuated by water
crossing a semi-permeable membrane that acts as an interface between the
salt polymer and the water, allowing water molecules to pass "but
prevent[ing] the passage of dissolved salts therethrough." Richards i-f 41.
Considering the disclosure of Richards' paragraph 41, one skilled in the art
would understand that the actuator 626 in the embodiment of Richards'
Figures 7 A and 7B could likewise (though perhaps would not inherently)
comprise a salt polymer swellable material that is actuated by water, with a
semi-permeable membrane acting as an interface to allow passage of water
molecules but not salts. This link between paragraphs 41 and 71 is not
unreasonable, as the embodiments share a common actuator element.
Richards is silent regarding the degree of coverage its semi-permeable
membrane has over its swellable material. Given that Richards is silent on
the amount of coverage, one skilled in the art would have considered full
coverage to be an obvious degree of coverage, as it would provide the
greatest level of desirable salt leakage prevention.
Appellant also argues that Richards does not disclose "which portion
of actuator 626 [(i.e., the swellable material)] is protected by such an outer
skin" or "how a semi-permeable barrier would protect actuator 626 from
premature actuation," and that the Examiner's proposal to modify Richards
to envelope all surfaces of its swellable material with a semi-permeable
barrier layer necessarily relies on hindsight, because Richards' paragraph 41
does not disclose a semi-permeable membrane, much less a semi-permeable
membrane completely enveloping its swellable material. Appeal Br. 13-14.
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The Examiner responds that Richards' paragraph 41 discloses a semi-
permeable membrane for its swellable material and, although paragraph 41
does not explicitly disclose enveloping all external surfaces of the swellable
material with a membrane, Richards' discloses that the swellable material
"would rely on such a membrane to prevent the material, which is comprised
of a 'salt polymer', from having the dissolved salts removed," such that one
skilled in the art would have found it obvious to "provide such a material
with such a membrane on all surfaces in order to fully retain the salts within
the material as described." Ans. 5.
We agree with Appellant that Richards' tubular fluid passage 622 and
support member 624 are not semi-permeable barrier layers. However, as
articulated above, one skilled in the art would understand that the actuator
626 in the embodiment of Richards' Figures 7 A and 7B could comprise a
salt polymer swellable material that is actuated by water, with a semi-
permeable membrane acting as an interface to allow passage of water
molecules but not salts, and one skilled in the art would have considered full
coverage to be an obvious degree of coverage, as it would have restricted the
passage of salt to the greatest degree. For these reasons, we sustain the
rejection of claim 3. Claims 4, 13, 14, 23, and 24 fall with claim 3. Because
our affirmance is based on a statement of the rejection that differs somewhat
from the statement articulated by the Examiner, we designate our affirmance
a new ground under 37 C.F.R. § 41.50(b) to provide Appellant with a full
and fair opportunity to respond thereto.
DECISION
We REVERSE the rejection of claim 31under35 U.S.C. § 102(b) as
anticipated by Richards.
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We AFFIRM the rejection of claims 3, 4, 13, 14, 23, and 24 under 35
U.S.C. § 103(a) as unpatentable over Richards, and designate the rejection as
a NEW GROUND under 37 C.F.R. § 41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record ....
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; 37 C.F.R. § 41.50(b)
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