Ex Parte Xu

Patent Trial and Appeal Board

Nov 16, 2016

12853871 (P.T.A.B. Nov. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/853,871 08/10/2010 Richard YingQing Xu
44639 7590 11/18/2016
CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED
20 Church Street
22nd Floor
Hartford, CT 06103
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.
OMS4-49434-US
(BA00654US)
CONFIRMATION NO.
6687
EXAMINER
LOIKITH, CATHERINE A
ART UNIT PAPER NUMBER
3674
NOTIFICATION DATE DELIVERY MODE
11/18/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD YINGQING XU
Appeal 2015-001294 1,2
Application 12/853,871
Technology Center 3600
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant's Specification ("Spec.," filed Aug. 10,
2010), Appeal Brief ("Appeal Br.," filed Aug. 11, 2014), and Reply Brief
("Reply Br.," filed Oct. 29, 2014), as well as the Final Office Action ("Final
Action," mailed Mar. 26, 2014) and the Examiner's Answer ("Answer,"
mailed Sept. 23, 2014).
2 According to Appellant, "BAKER HUGHES INCORPORATED" is the
real party in interest. Appeal Br. 1.
Appeal2015-001294
Application 12/853,871
According to Appellant, the invention is directed to a system and
method for fracturing a subterranean formation, for purposes relating to
hydrocarbon exploration and recovery. See Spec. i-fi-f l, 4, 5. Claims 1, 9,
and 19 are the only independent claims. See Appeal Br., Claims App. We
reproduce claim 1, below, as representative of the appealed claims.
Id.
1. A system for fracturing a subterranean formation
compnsmg:
a housing having one or more radially directed ports
therein;
a valve disposed within the housing proximate the one or
more ports; and
a seat member interactive with the valve to rapidly prevent
or substantially retard a fluid flow therethrough, resulting in a
local pressure spike in the fluid created solely by a retardation of
fluidic momentum when the system is in use, the pressure spike
initiating fracture formation without pressuring up from surface.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1-8 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejects claims 1, 3, 9-11, 16, and 19 under 35 U.S.C.
§ 102(b) as anticipated by Lopez de Cardenas (US 2007/0272411 Al, pub.
Nov. 29, 2007).
The Examiner rejects claims 2, 12, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Lopez de Cardenas.
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Appeal2015-001294
Application 12/853,871
The Examiner rejects claims 4--8, 13-15, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Lopez de Cardenas and Garcia
(US 6,732,803 B2, iss. May 11, 2004).
See Final Action 2-8; see also Answer 2.
ANALYSIS
Written description
The Examiner rejects claims 1-8 as failing to comply with the written
description requirement. See Final Action 2. Specifically, the Examiner
determines that
[a] local pressure spike where "the pressure spike initiat[ es]
fracture formation without pressuring up from surface" as
claimed in amended claim 1 is not properly described in the
application as filed. There is no specific recitation of such a
limitation in the present Specification. While there is no positive
teaching of relying on a pressure spike from the surface to initiate
fracture formation, there is also no positive teaching of a total
iack of a pressure spike from the surface.
Final Action 2. Based on our review, however, we determine that the
originally-filed Specification reasonably conveys that Appellant had
possession of the claimed invention, including creation of a pressure spike
initiating fracture formation without pressuring up from the surface, at the
time the application was filed.
For example, we agree with Appellant that, when taken as a whole,
the application is understood to provide an alternative to prior art systems
that require pressuring up from the surface. See Appeal Br. 5; see also
Reply Br. 2. Further, the Specification, as originally filed, describes
[a] system for fracturing a subterranean formation including a
housing having one of more radially directed ports therein; and a
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Appeal2015-001294
Application 12/853,871
configuration within the housing capable of rapidly and
substantially retarding fluidic momentum of a fluid flowing
therethrough resulting in a pressure spike sufficient to initiate
fracture formation in a subterranean formation.
Spec. i-f 6 (emphasis added). Restated, the Specification describes creation
of a pressure spike that is sufficient to initiate fracture formation without the
use of any other mechanism. Still further, the Specification describes
"[f]lowing fluid in a conduit having a given pressure will experience a rapid
increase in pressure at a location where that fluid is caused to suddenly
decrease velocity or stop. The pressure spike generated by such phenomena
is harnessed to initiate a fracture as described herein." Id. at i-f 11. Thus, this
portion of the Specification also describes creation of a pressure spike that
initiates fracture formation without the use of any other mechanism. Based
on the foregoing, we determine that the statements in the Specification
describing the creation of a pressure spike sufficient to initiate fracture
formation in a subterranean formation, without reference to any other
mechanism for creating a pressure spike including a mechanism for
pressuring up from the surface, provide support for the claim recitation of
"the pressure spike initiating fracture formation without pressuring up from
[the] surface" as recited by claim 1.
Anticipation and Obviousness
Independent claim 1 requires
a seat member interactive with the valve to rapidly prevent or
substantially retard a fluid flow therethrough, resulting in a local
pressure spike in the fluid created solely by a retardation of
fluidic momentum when the system is in use, the pressure spike
initiating fracture formation without pressuring up from surface.
Appeal Br., Claims App. Appellant argues that Lopez de Cardenas does not
teach such a seat member, because Lopez de Cardenas requires pressure to
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Appeal2015-001294
Application 12/853,871
be applied from the surface, and also does not otherwise disclose that a seat
member creates a pressure spike sufficient to initiate fracture formation by
itself. See id. at 6-7; see Reply Br. 2--4. In response, the Examiner finds
that Lopez de Cardenas's paragraph 3 5 describes alternate embodiments-
one of which applies pressure from the surface, and another that does not.
See Answer 4. Based on our review of Lopez de Cardenas, we conclude that
the Examiner's finding that Lopez de Cardenas discloses an embodiment
that does not apply pressure from the surface is not supported by substantial
evidence. Thus, we do not sustain the anticipation rejection of claim 1.
We also do not sustain the anticipation rejection of independent
claims 9 and 19, which each recite a similar limitation and which the
Examiner rejects based on similar reasoning. Further, we do not sustain the
anticipation or obviousness rejections of claims 2-8 and 10-18 that depend
from the independent claims, inasmuch as the Examiner does not rely on any
other reference to remedy the deficiency in the independent claims'
rejection.
DECISION
We REVERSE the Examiner's written description, anticipation, and
obviousness rejections of claims 1-19.
REVERSED
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