Ex Parte Wardlaw

Board of Patent Appeals and Interferences

Oct 28, 2011

10924057 (B.P.A.I. Oct. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/924,057 08/20/2004 Louis J. Wardlaw 002663/000156 4378
7590 10/31/2011
WILLIAM C. NORVELL, JR.
Beirne, Maynard & Parsons, L.L.P.
Ste. 2500
1300 Post Oak Blvd.
Houston, TX 77056-3000
EXAMINER
FULLER, ROBERT EDWARD
ART UNIT PAPER NUMBER
3676
MAIL DATE DELIVERY MODE
10/31/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LOUIS J. WARDLAW
____________

Appeal 2009-014686
Application 10/924,057
Technology Center 3600
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Louis J. Wardlaw (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-5 under 35 U.S.C. § 102(b) as
being anticipated by Lang (US 3,175,618; issued March 30, 1965). We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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THE INVENTION
Appellant’s claimed invention “relates to an apparatus and method for
the repair of failure spots along a first tubular conduit, such as casing, in a
subterranean well.” Spec. 1, ll. 6-7. Claims 1 and 2, reproduced below, are
representative of the subject matter on appeal.
1. An apparatus for introduction into a subterranean well on
a conduit for the repair of failure spots along a first tubular
section encased within said well, comprising:
(a) a malleable cylindrical housing means responsive to
shock waves generated within said housing to outwardly and
radially expand said housing across and into said failure spots;
(b) means within said housing to generate shock waves to
initiate expansion of said housing; and
(c) actuation means for actuating said means to generate
said shock waves.
2. The apparatus of Claim 1, further comprising: a head
element initially secured to one end of said housing and
selectively disengagable there from subsequent to expansion of
said housing, said head element having means for securing said
conduit thereto for introduction, setting and retrieval of said
head element within the well, whereby the expanded housing is
retained within said well and the head is retrieved from within
the well.
ISSUES
Appellant argues claims 1, 3, and 4 as a first group, and claims 2 and
5 as a second group. Br. 10-11. We select claim 1 as representative of the
first group and claim 2 as representative of the second group. Claims 3 and
4 stand or fall with claim 1, and claim 5 stands or falls with claim 2. See
37 C.F.R. § 41.37(c)(1)(vii).
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Appellant argues that the Examiner erred in rejecting claim 1 because
in Lang “it is not the housing [15] that is moved outwardly by shock waves,
but, rather a metal sleeve 14 carried by the housing 15.” Br. 10 (citing Lang,
col. 2, ll. 42-45). Appellant argues the Examiner erred in rejecting claim 2
because “[w]hile the Examiner is correct that the head element 21 of [Lang]
is connected to the rest of the device by means of rods 37, there is no
disclosure of any disengagement of the head from the rods” and “the entire
device is left in the well.” Br. 11.
The issues presented by this appeal are:
Did the Examiner establish by a preponderance of the evidence that
Lang discloses the claimed “malleable cylindrical housing means” called for
in claim 1?
Did the Examiner establish by a preponderance of the evidence that
Lang discloses a “head element” that is “selectively disengagable” from the
housing and “retrieved from within the well” as called for in claim 2?
ANALYSIS
Appellant’s Specification describes an apparatus or tool 100
comprised of “an upper head element 103” and “a cylindrical housing 105,
made of a malleable material, such as iron, thin sheet metal alloys, tin or the
like” or “any similar malleable material which will permit radial expansion
in response to shock waves generated by an explosive charge within the
housing 105.” Spec. 4, ll. 18-23. A person of ordinary skill in the art would
understand the claimed “malleable cylindrical housing means” to call for a
housing in the form of a cylinder that is made of a malleable material
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capable of expanding outwardly and radially across and into failure spots in
response to shock waves generated within the housing. Claim 1 further calls
for the housing to house means “to generate shock waves to initiate
expansion of said housing” (i.e., electric line 101 and detonator cord or
charge 106). Br. 7.
We agree with the Examiner’s findings, as set forth in the Answer on
page 3, lines 3-6, page 4, lines 9-12 and 20-22, and page 5, lines 1-3 as to
the disclosure of Lang and we adopt them as our own. In particular, we
agree that Lang discloses a metal sleeve 14 that meets the limitation of the
“malleable cylindrical housing means” as called for in claim 1. Lang’s
sleeve 14 is disclosed as a cylindrical sleeve made of metal, such as “a thin-
walled tube of aluminum, lead, copper, nickel, stainless steel, or other
expansive material.” Lang, col. 1, ll. 41-43; col. 3, ll. 6-9; fig. 1. Lang
discloses that detonation of an explosive charge 17 housed within the metal
sleeve 14 causes a shock wave, which causes “[t]he metal sleeve [to be]
shock-formed into contact with the inside of the casing.” Lang, col. 2, ll. 44-
45; fig. 1. Thus, Lang discloses a malleable cylindrical metal sleeve.
Further, we agree with the Examiner that because Lang’s metal sleeve 14
houses the charge 17, it is a “housing.” Appellant has not defined “housing”
within the Specification so as to disclaim a cylinder that houses an explosive
charge. To the contrary, Appellant’s Specification describes the housing as
“cylindrical housing 105.” Spec. 4, l. 20. As such, we sustain the rejection
of claims 1, 3, and 4 under 35 U.S.C. § 102(b) as anticipated by Lang.
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Claim 2 depends from claim 1 and calls for the head element to be
“initially secured to one end of said housing,” “selectively disengagable”
from the housing, and “retrieved from within the well.”
Appellant does not dispute the Examiner’s finding that the head
element 21 is secured to one end of the housing 14 via rods 37. Br. 11.
Appellant argues that “there is no disclosure of any disengagement of the
head [21] from the rods [37]” and that “the entire device is left in the well.”
Id. We agree with the Examiner’s finding that the entire device of Lang is
not left in the well, and that, in fact, the head element 21 along with portions
of the receptacle 15 retained by clamp 23 are removed from the well by
withdrawing supporting cable 19. Ans. 5; Lang, col. 1, ll. 43-47 and col. 2,
ll. 59-61; fig. 1. We further agree with the Examiner’s finding that Lang’s
head element 21 is “selectively disengagable” from the housing. Ans. 5. As
the Examiner explained, “[u]pon detonation, sleeve 14 is expanded and
‘shock formed’ into contact with the casing (column 2, lines 44-45),
receptacle 15 is disintegrated (column 2, lines 55-58), and whatever remains
attached to head 21 is pulled out of the well (column 2, lines 59-61).” Id.
For these reasons, we sustain the rejection of claims 2 and 5 under 35 U.S.C.
§ 102(b) as anticipated by Lang.
CONCLUSIONS
The Examiner established by a preponderance of the evidence that
Lang discloses the claimed “malleable cylindrical housing means” called for
in claim 1.
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The Examiner established by a preponderance of the evidence that
Lang discloses a “head element” that is “selectively disengagable” from the
housing and “retrieved from within the well” as called for in claim 2.
DECISION
The decision of the Examiner to reject claims 1-5 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

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