Ex Parte Wetzel et al

Board of Patent Appeals and Interferences

Dec 9, 2010

10942288 (B.P.A.I. Dec. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RODNEY J.WETZEL, SUDHIR PAI, DAVID R. SMITH,
PETER V. HOWARD, CRAIG D. JOHNSON,
MICHAEL LANGLAIS, JAKE A. DANOS, and
PATRICK W. BIXENMAN
____________

Appeal 2009-009947
Application 10/942,288
Technology Center 3600
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/942,288

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STATEMENT OF THE CASE
Rodney J. Wetzel et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the rejection of claims 1-29. We have jurisdiction under 35 U.S.C.
§ 6(b).
The Invention
The claimed invention is directed to well monitoring.
Claim 19, reproduced below, is illustrative of the subject matter on
appeal.
19. A system for use in a well, comprising:
an expandable wellbore tubing capable of
being expanded from a first nominal diameter to a
second nominal diameter; and
a sensor coupled to the expandable wellbore
tubing to monitor a characteristic of the
expandable wellbore tubing during expansion.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Serata US 5,576,485 Nov. 19, 1996
Cameron US 6,877,553 B2 Apr. 12, 2005

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 2, 5-10, 12, 17-19, and 24-29 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Serata.
Claims 1-12, 17-20, and 23-29 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable in view of Cameron and Serata.
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Claims 3, 4, 11, 13-16, and 20-23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable in view of Serata alone.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

DISCUSSION
Anticipation based on Serata
We select claim 19 as representative of this ground of rejection based
on Appellants’ arguments. Appellants’ arguments are essentially directed to
Serata failing to disclose the claimed features of an “expandable wellbore
tubing” and a “sensor.” App. Br. 5-6. The remainder of Appellants’
arguments for independent claims 1, 7, 9, and 27 are essentially reiterations
of the claimed features associated with these claims and arguments that
Serata fails to disclose these features. App. Br. 6. Such arguments are
essentially general statements for patentability. A general statement for
patentability is a statement that merely points out what a claim recites and
such statements are not considered an argument for separate patentability of
the claim. For claims 2, 5, 6, 8, 10, 17, 18, 24-26, and 28-29, Appellants
rely on their arguments for patentability for their corresponding independent
claims. App. Br. 6-7. As such, claims 2, 5-10, 17, 18, and 24-29 stand or
fall with claim 19. 37 C.F.R. § 41.37(c)(1)(vii).
A determination of anticipation or obviousness begins with claim
construction, followed by a comparison of the construed claim to the prior
art. Key Pharm. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998).
When claim terminology is construed in the United States Patent and
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Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
Based on Appellants’ arguments, the first issue that needs to be
addressed is what is the broadest reasonable interpretation for the claim term
“expandable wellbore tubing” that is consistent with the Specification as
understood by a person of ordinary skill in the art. Appellants’ Specification
discloses: “The expandable tubing 90 may be a solid expandable tubing, a
slotted expandable tubing, an expandable sand screen, or any other type of
expandable conduit.” Spec. 14, para. [0040]. Appellants’ Figure 9 depicts
expandable tubing 90 within a wellbore 10 which is depicted as a bladder for
receiving a fluid medium. As such, the broadest reasonable interpretation to
the claim term “expandable wellbore tubing” that is consistent with the
Specification is an expandable conduit used in a wellbore.
The next issue is whether Serata’s “probe” 20, in particular the tubular
expansion member 41, satisfies the broadest reasonable interpretation of an
“expandable wellbore tubing.” Serata discloses that the expansion member
41 includes an outer surface lamina 40 which controls and directs the
expansion of the member during the inflation of said member by the high
pressure fluid received within the annular interstitial space 42. The outer
surface of expansion member 41 has bonded to it a layer 47 of high strength
fiber that is oriented circumferentially and circumscribing the expansion
member 41. In addition, an outer laminar layer 49 of metal mesh is bonded
to expansion member 41 together with the fiber layer 47. Serata discloses
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that this layer 49 is made to especially have a high friction surface so as to
engage the surface of the borehole wall. Col. 5, ll. 11-27.
Given that the broadest reasonable interpretation of the claim term
“expandable wellbore tubing” is an expandable conduit used in a wellbore
and Serata’s expandable member 41 contains a space 42 for receiving the
high pressure fluid in order for the member to expand, the Serata “probe” 20
does satisfy the broadest reasonable interpretation of the claim term
“expandable wellbore tubing.”
Concerning Appellants’ arguments that Serata fails to disclose a
“sensor” to monitor a characteristic of the expandable wellbore tubing
during expansion, we disagree with Appellants’ understanding of Serata. As
discussed above, Serata’s LVDTs measure borehole deformation. The
borehole deformation is caused by the applied pressure from the hydraulic
fluid within the expandable member 41. Measuring the deformation of the
borehole is also a measure of the extent the expandable member 41 has
expanded within the borehole. Accordingly, the Serata “sensor” does
monitor a characteristic of the expandable wellbore tubing during expansion,
i.e., as the expandable member expands the LVDTs are measuring the
deformation of the borehole.
Accordingly, the Examiner did not err in finding that the Serata
“probe 20” anticipates the “expandable wellbore tubing” and “sensor” as set
forth in claim 19.
In view of the foregoing, we sustain the Examiner’s rejection of claim
19 as anticipated by Serata. Claims 2, 5, 6, 8, 10, 17, 18, 24-26, and 28-29
fall with claim 19.
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For claim 12, we agree with Appellants that Serata fails to disclose the
use of a pressure sensor. Claim 12 limits the sensor to a pressure sensor.
Pursuant to claim 9, this sensor is disposed in a region to monitor a
characteristic of the expandable wellbore tubing during expansion. Serata’s
LVDT2s are not explicitly pressure sensors as these sensors do not measure
any pressure, but instead measure linear displacements. In the case of
Serata, these sensors are measuring the radial displacement of the
expandable member 41. Col. 6, ll. 8-12. As disclosed in Serata, the LVDTs
are measuring borehole deformation in response to the applied pressure from
the high pressure fluid being delivered by the high pressure fluid line
connected to the operating equipment outside the borehole. Col. 4, ll. 32-42
and col. 8, ll. 29-30.
Accordingly, we do not sustain the Examiner’s rejection of claim 12
as anticipated by Serata.
Obviousness based on Cameron and Serata
Appellants contend that Cameron fails to disclose or suggest a device
or method for monitoring a characteristic of an expandable wellbore tubing
during expansion or the use of an intelligent completions device connected
to the expandable wellbore tubing. App. Br. 7. The former argument is
directed to an individual attack on the references when the rejection is based
on the combination of Cameron and Serata. Moreover, as noted above,
Serata’s “sensor” monitors a characteristic of an expandable wellbore tubing
during expansion. The latter line of argument appears directed to the
claimed limitations associated with claim 1. Appellants appear not to

2 Linear Variable Differential Transformer.
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contest the Examiner’s finding that Serata discloses a controller as set forth
in the appealed claims. Id. Appellants’ further arguments for independent
claims 1, 7, 9, 19, and 27 are essentially reiterations of the claimed features
associated with these claims and that Serata fails to disclose these features.
App. Br. 8. Such arguments are essentially general statements for
patentability and are not considered arguments for separate patentability of
the claims. Accordingly, except for the aforementioned individual attack on
Cameron, Appellants appear to rely on the arguments for the patentability of
claim 1 for the remaining independent claims 7, 9, 19, and 27. For claims 2-
6, 8, 10-12, 17, 18, 20, 23-26, 28, and 29, Appellants rely on their arguments
for patentability for their corresponding independent claims. Accordingly,
based on the manner Appellants have elected to argue this ground of
rejection, claims 2-6, 8, 10-12, 17, 18, 20, 23-26, 28, and 29 will stand or
fall with their respective independent claims, i.e., 1, 7, 9, 19, and 27.
Based on Appellants’ arguments, the determinative issue for this
ground of rejection is whether Cameron discloses or suggests an intelligent
completions device connected to an expandable wellbore tubing. As
discussed above, the broadest reasonable interpretation for the claim term
“expandable wellbore tubing” is an expandable conduit used in a wellbore.
Appellants’ Specification provides the following examples of “intelligent
completions devices:”
gauges, sensors, valves, sampling devices, a device
used in intelligent or smart well completion,
temperature sensors, pressure sensors, flow-
control devices, flow rate measurement devices,
oil/water/gas ratio measurement devices, scale
detectors, actuators, locks, release mechanisms,
equipment sensors (e.g., vibration sensors), sand
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detection sensors, water detection sensors, data
recorders, viscosity sensors, density sensors,
bubble point sensors, pH meters, multiphase flow
meters, acoustic sand detectors, solid detectors,
composition sensors, resistivity array devices and
sensors, acoustic devices and sensors, other
telemetry devices, near infrared sensors, gamma
ray detectors, H2S detectors, CO2 detectors,
downhole memory units, downhole controllers,
perforating devices, shape charges, firing heads,
locators, and other downhole devices. In addition,
the control line itself may comprise an intelligent
completions device as mentioned above. In one
example, the fiber optic line provides a distributed
temperature functionality so that the temperature
along the length of the fiber optic line may be
determined.
Spec. 9, para. [0030] (emphasis added).
Cameron discloses an expandable tubular 20 within a wellbore 40.
Cameron further discloses that the expandable tubular 20 contains recesses
10 along the outside wall 26. Recesses 10 serve as housings for
instrumentation lines or control lines 62. Col. 3, l. 38 through col. 4, l. 15.
Lines 62 include “any type of data acquisition lines, communication lines,
fiber optics, cables, sensors, and downhole ‘smart well’ features.” Col. 4, ll.
15-18.
Given that Cameron discloses an expandable tubular within a
wellbore, Cameron’s tubular satisfies the broadest reasonable interpretation
of the claim limitation of an expandable wellbore tubing. Given also that
Cameron discloses similar instrumentalities as Appellants’ Specification
discloses, Cameron’s lines 62 satisfy the broadest reasonable interpretation
of the claim limitation of an intelligent completions device. Given that
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Cameron’s lines 62 are disclosed as being housed within recesses 10,
Cameron’s disclosure satisfies the claimed limitation of having the
intelligent completions device connected to the expandable wellbore tubing.
Further, the combined teachings perform the monitoring during expansion.
Based on the foregoing, we determine Appellants’ arguments do not
demonstrate a reversible error in the Examiner’s obviousness rejection of
claim 1. Inasmuch as Appellants’ arguments fail to demonstrate reversible
error for claim 1, the arguments fail to demonstrate reversible error for
claims 7, 9, 19, and 27. As such, we sustain the Examiner’s obviousness
rejection of claim 1, 7, 9, 19, and 27. Claims 2-6, 8, 10-12, 17, 18, 20, 23-
26, 28, and 29 fall with their respective independent claims.
Obviousness based on Serata alone
We will not sustain the obviousness rejection based on Serata alone.
There must be a sound evidentiary basis for any rejection under 35 U.S.C.
§ 103 and the Examiner has not provided us with one with respect to the
subject matter of claims 3, 4, 11, 13-16 and 20-23. Instead, the Examiner
has merely stated that it would be obvious, as a simple substitution of one
equivalent element for another, to substitute any of the various sensors
claimed and to obtain predictable results from such a substitution. Ans. 6.
Without first having a sufficient evidentiary basis proffered by the
Examiner, such statements are conclusory. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (The examiner has the initial duty of supplying the
requisite factual basis for the rejection and may not, because of doubts that
the invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual basis.)

Appeal 2009-009947
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DECISION
The Examiner’s decision to reject claims 1-12, 17-19, and 23-29 is
affirmed.
The Examiner’s decision to reject claims 13-16 and 20-22 is reversed.
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) (2007).

AFFIRMED-IN-PART

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